European Community Trademark

The European Community Trademark (“CTM”) enables trademark owners to file a single application for the protection of a trademark in all EU member states. The CTM registration system does not replace national trademark rights but co-exists with them. In fact, in certain circumstances, it would be advisable to file an application in the applicant’s home country simultaneously with a CTM application.

The Office of Harmonisation in the Internal Market (OHIM) is the authority responsible for CTMs and is based in Alicante, Spain.

Opposition

The CTM system is opposition based and applications obtain priority by virtue of their filing date. An opposition in one CTM jurisdiction will bring the progression of the CTM application throughout the European Union to a halt until that opposition is resolved. If an opposition is successful in one CTM jurisdiction, the CTM application is rejected in respect of all 25 countries. Nonetheless, a rejected CTM application may be converted to a series of national applications bearing the same priority date.

Classification of Goods and Services

The CTM adopts the official International Classification of Goods and Services and multi-class applications are permitted.

Priority

Applicants for a CTM may avail themselves of a 6 month period to claim priority, based on their first application in a member country of the Paris Convention for the Protection of Industrial Property or of the World Trade Organisation.

Seniority

If applicants or proprietors of a Community trade mark already hold a prior identical national trade mark for identical goods and services, they may claim the seniority of that mark. This allows them to preserve their prior rights even if they surrender their national trade mark or do not renew it.

Proof of Use

A CTM must be used within the EU within a period of 5 years from the date of registration. Proof of Use of a CTM in one EU member state satisfies this requirement in respect of all EU member states.

Documents Required

The documents required for the registration of a Community trademark are:

  1. our standard power of attorney with the signatures thereon duly attested by a notary or legalised with the Apostille on the reverse side in terms of the Hague Convention or duly legalised by a Diplomatic or Consular Representative.
  2. Three (3) copies of the mark to be registered.
  3. Details as to whether a colour claim is being lodged and of any priority or seniority being claimed, together with the relative documentation.

Term

A CTM registration is valid for 10 years from the filing date and is renewable for further 10 year periods.

Assignment

A CTM may be freely assigned, transferred or licensed. Furthermore, the rights granted on the CTM may be restricted to some of the registered goods or services and/or to a part of the EU. Such agreements must be recorded at OHIM to be effective against third parties.

The services provided by the firm in this field include:

  • Registration, administration and litigation in relation to trademarks, patents, designs and other intellectual property rights.
  • Registration and administration of European Community Trademarks and Community Designs as well as assistance in the protection of intellectual property rights internationally, both within and outside of Europe.
  • Advice and assistance including litigation in relation to copyright.
  • Advice and assistance in relation to the assignment of intellectual property rights.

Further information may be obtained from one of our leading experts by contacting us below:

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