Trademark registration in the European Union or CTM (Community Trademark) allows, by a single procedure and cost, to register a trademark in the 28 actual States of the EU:
Germany, Austria, Belgium, Bulgaria, Croatia, Cyprus, Denmark, Slovakia, Slovenia, Spain, Estonia, Finland, France, Greece, Holland, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, United Kingdom , Czech Republic, Romania and Sweden.
One of the most frequently asked questions is about the scope of the registration in the overseas regions. Let’s clarify. Community trademark registration is valid in the following regions:
- Denmark: excluded Greenland and the Faroe Islands. So it is necessary to protect through a national trademark in Denmark.
- Spain: Canary Islands, Ceuta and Melilla included.
- France: including overseas departments (Martinique, Guadeloupe, Reunion, Guyana). However, do not include the following territories: New Caledonia, Wallis and Futuna, French Polynesia, French Southern and Antarctic Territories, Mayotte. In those regions, it will be necessary a French trademark registration in order to be protected
- Portugal: Azores and Madeira included.
- UK: included Gibraltar. Channel Islands and the Isle of Man that require protection through a national trademark in the UK are not included.
Trademark in the EU. The process
It is common to ask about the duration of the processing of a trademark in the European Union. In this regard, note that nowadays it is an agile administrative process, ruled by the Office for Harmonization in the Internal Market (OHIM) located in Alicante (Spain) and, if no objections arise, has an average processing time of 6 months. The processing is done in the official language of the Member State filing and one of three official: English, French or German, and consists of the following steps:
- Filing of the application.
- Formal examination (1 week).
- Publication and term for filing of oppositions (term: 3 months).
- Resolution of granting or denial and time for appeal (deadline: 2 months).
Trademark in the EU. Obligation of use
Another frequent doubt about CTM registration is their obligation to use. The obligation to proof the use can only be required:
- To whom initiate an action of Opposition (the Opponent) or Nullity (the Plaintiff)
- If the previous registered trademark has been registered for a minimum period of 5 years before the date of publication of the community trademark’s application.
The use is demonstrated by providing invoices, catalogs, and packaging. It must be considered that the storage of products shall not be considered as usage.
Regarding territoriality, trademarks has to be used within the territory in which they have been registered. Such that:
- If the previous right is a national trademark, we would have to demonstrate the use in this specific country.
- If the right is a community trademark, demonstration of the use in the territory of only one State would be sufficient.
Trademark in the EU. Renewal
Regarding the renewal of Community trademarks, note that community trademarks have a duration of 10 years renewable for similar periods indefinitely. Is essential to apply for renewal in order to preserve the right in force.
Regarding the renewal term clarify that:
- It can be filed 6 months before the anniversary date of application and shall take effect from the day after the registration expires.
- OHIM provides an extraordinary period of up to six months for renewal with a charge at the official rate amounting to 25%. This extraordinary period begins to run from the day after the last day of the month in which the trademark should have been renewed.
There is also the possibility of a partial renewal of CTM, ie, eliminating some of the classes of the Nice Classification. This is an interesting option for the cases in which they apply for more than 3 classes of classification and in practice it has been found that are not necessary, so this option means a saving in the renewal process.
In the renewal application is also possible to, beside to delete classes, modify the list of goods and services. These modifications shall be reviewed and accepted only if intended to limit the scope of the goods and services registry. This is the best alternative if commercially has been observed that the products and / or services marketed under the trademark are concrete and did not appear specifically in the application.
Finally, also exists the possibility of preserving the rights conferred by a Community trademark in only some Member States of the EU through a request for transformatioin. This request for tranformation shall be filed within 3 months from the expiration of the additional period of renewal previously mentioned.
The transformation alternative is cheaper than renewal and therefore a good choice for those trademark registrations that have not been used commercially in more than one country or two of the EU.
DO YOU NEED TO REGISTER A TRADEMARK IN THE EU?
