Community trade mark

The major advantage of the Community trade mark system is that it makes possible the uniform identification of products and services by enterprises throughout the European Union (EU). A unique procedure applied by the Office for Harmonisation in the Internal Market (OHIM) allows them to register trade marks which will benefit from unitary protection and be fully applicable in every part of the Community.

ACT

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark [See amending acts].

SUMMARY

This Regulation introduces a system for the award of Community trade marks by the Office for Harmonisation in the Internal Market (OHIM). Requiring no more than a single application to OHIM, the Community trade mark has a unitary character in the sense that it produces the same effects throughout the Community.

Trade mark rights

A Community trade mark may consist of any signs capable of being represented graphically (particularly words, designs, letters, numerals, the shape of goods or of their packaging) provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The following natural or legal persons, including authorities established under public law, may be proprietors of Community trade marks:

• the Member States;
• other States which are parties to the Paris Convention for the protection of industrial property;
• nationals of States which are not parties to the Paris Convention who are domiciled or have their seat within the territory of the Community or of a State which is party to the Paris Convention;
• nationals of any other State which accords to nationals of all the Member States the same protection for trade marks as it accords to its own nationals.

Registration is refused, in particular, in the case of:

• signs which are not suitable to serve as Community trade marks;
• trade marks which are devoid of any distinctive character;
• trade marks consisting of signs or indications that have become customary in current parlance or commercial practice;
• trade marks which are contrary to public policy or to accepted principles of morality;
• trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

A Community trade mark confers on its proprietor exclusive rights. The proprietor is entitled to prohibit all third parties from using in the course of trade:

• any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
• any sign for which there exists a likelihood of confusion on the part of the public in relation to another trade mark;
• any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, if the sign is used to exploit the reputation or distinctive character of the trade mark.

On the other hand, a Community trade mark does not entitle the proprietor to prohibit a third party from using in the course of trade:

• his own name or address;
• indications concerning the kind, quality, quantity, intended purpose, value and geographical origin and the time of production of the goods or of rendering of the service or other characteristics of the goods or service;
• the trade mark, where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.

In the five years following registration, the proprietor must put the Community trade mark to genuine use in the Community in connection with the goods or services for which it is registered.

A Community trade mark is dealt with for the whole area of the Community as a national trade mark registered in the Member State in which the proprietor has his seat or his domicile or an establishment on the relevant date. Rules relating to transfer of the trade mark to another party, levy of execution, bankruptcy or like proceedings, licensing and effects vis-à-vis third parties (opposability to third parties) are also laid down.

Application for a Community trade mark

An application for a Community trade mark may be submitted, at the choice of the applicant, with either the OHIM, at the central industrial property office of a Member State, or the Benelux Trade Mark Office. The office concerned must then forward the application to OHIM within two weeks of filing. It must be accompanied by various documents and information (in particular, a registration request, information identifying the applicant and the list of the goods or services for which the registration is requested) and necessitates the payment of an application fee and, where appropriate, one or more class fees.

A person who has filed an application for a trade mark in any State party to the Paris Convention enjoys a right of priority for the purpose of filing a Community application in respect of the same trade mark during a period of six months from the date of filing of the first application.

The proprietor of an earlier trade mark registered in a Member State who applies for an identical trade mark for registration as a Community trade mark may invoke the seniority of the earlier national trade mark.

Registration procedure

The Regulation sets out the provisions governing the filing of an application for a Community trade mark, the conditions associated with the entitlement of the proprietor and the possibility for third parties to make written observations to OHIM and to oppose the registration of a trade mark. In particular, the Regulation establishes the "searching" system designed to identify any conflict with other earlier rights. An application for a Community trade mark must involve two searches, conducted by OHIM and the national industrial property offices, in respect of existing Community or national trade marks or trade mark applications (Regulation (CE) No 422/2004 significantly modified this system - see below).

At any time, the applicant may withdraw his application for a Community trade mark or limit the list of products and services it contains. If it satisfies the relevant conditions, the application for a Community trade mark is published.

Duration and renewal

The Community trade mark is registered for ten years from the date of filing of the application. Registration is renewable for further periods of ten years.

Surrender, revocation and invalidity

A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. On application to the Office and after examination, the rights of the proprietor of a Community trade mark may be declared revoked if:

• within a continuous period of five years, the trade mark has not been put to genuine use in the Community and there are no proper reasons for non-use;
• in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered;
• the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services;
• the proprietor of the trade mark no longer satisfies the conditions of entitlement applicable to proprietors of a Community trade mark.

The Regulation lists the grounds which can invalidate the registration of a Community trade mark and outlines the consequences of revocation and invalidity and the application procedure for revocation and invalidity.

Appeals procedure

An appeals procedure may be initiated against any decision of the OHIM examiners, Opposition Divisions, the Administration of Trade Marks and Legal Divisions and the Cancellation Divisions. The Regulation defines the persons entitled to appeal, the time limit and form of appeal and specifies the conditions for interlocutory revision, the examination of appeals, appeals decisions and actions before the Court of Justice.

Community collective marks

When the application is filed, a Community trade mark may be designated as collective if it is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services or traders, as well as legal persons under public law, are entitled to register Community collective marks.

Jurisdiction and procedure in legal actions relating to Community trade marks

The Member States are required to designate in their territories a limited number of national courts and tribunals of first and second instance with exclusive jurisdiction for:

• all infringement actions;
• actions for declaration of non-infringement;
• counterclaims for revocation or invalidity of the Community trade mark.

If infringement is established, the competent Community trade mark court issues an order prohibiting the defendant from continuing the infringing activity. It must also take all necessary measures to ensure compliance with this prohibition.

Impact on national law

The Regulation defines the procedure applicable to simultaneous and successive civil actions on the basis of Community and national trade marks. It also refers to the implementing provisions of national law for the purpose of prohibiting the use of Community trade marks, particularly national legislation allowing the initiation of actions for infringement of earlier rights against the use of a later Community trade mark.

In certain cases, the applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application.

Office for Harmonisation in the Internal Market (OHMI)

The Office is a Community body. It has legal personality. In each Member State, it enjoys the most extensive legal capacity accorded to legal persons by their national legislation. In particular, it can acquire or dispose of immovable or movable property and be a party to legal proceedings. The Office is represented by its President.

Applications for Community trade marks are filed in one of the official languages of the European Community. The languages of the Office are English, French, German, Italian and Spanish. The applicant must indicate a second official language of the Office, the use of which he accepts as a possible procedural language.

Amending Regulation (EC) No 3288/94

This Regulation is designed to implement the TRIPs Agreement (on Trade-Related Aspects of International Property Rights) of the World Trade Organisation (WTO) concluded in the framework of the Uruguay Round (1986-1994).

Amending Regulation (EC) No 422/2004

This Regulation makes a number of amendments to the Community trade mark system with a view to increasing its efficiency and improving its operation. In particular, it simplifies the application of the "searching system" in respect of existing rights. Only the OHIM search for existing Community trade marks remains obligatory, with searches conducted by the national industrial property offices now being optional. Consequently, whilst national searching remains possible, it is dependent on an express request by the applicant and payment of a special search fee.

The Regulation also alters the definition of "Community trade mark proprietors". Formerly, the Community system was only open to persons who were non-EU nationals or not established in an EU Member State or a signatory state of the Paris Convention for the protection of industrial property if they were covered by a reciprocal agreement between the third country concerned and the EU concerning recognition of the Community trade mark. The new Regulation withdraws the nationality and reciprocity conditions. Thus, the Community system is now entirely accessible to anyone seeking uniform trade mark protection in the EU.

Other changes made by the Regulation relate to the division of applications for Community trade marks, designations of origin and geographical references (in the interest of greater legal safety) and the OHIM Boards of Appeal (more precise definition of role, provision of additional resources to improve operation).

Accession of the European Community to the Madrid Protocol

In June 2004, the European Community submitted to the World Intellectual Property Organisation (WIPO) its instrument of accession to the Madrid Protocol relating to the internal registration of trade marks. This is the first time that the Community, in its own right, has signed a WIPO treaty. With the accession of the EC, a link is now established between the Madrid system, administered by WIPO, and the Community trade mark system, regulated by OHIM.

As of 1 October 2004, when the Treaty of Accession came into force, applicants and holders of Community trade marks are now able to obtain international protection for their trade mark by filing an international application under the Madrid Protocol. Conversely, holders of international registrations under the Madrid Protocol can also seek protection for their trade marks through the Community trade mark system.

The Madrid Protocol covers more than sixty countries, including the United States, Japan, China, Russia and Australia.

RELATED ACTS

ACCESSION OF THE COMMUNITY TO THE MADRID PROTOCOL ON INTERNATIONAL TRADE MARKS

Council Decision 2003/793/EC of 27 October 2003 approving the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 [Official Journal L 296 of 14.11.2003]

and

Council Regulation (EC) No 1992/2003 of 27 October 2003 amending Regulation (EC) No 40/94 on the Community trade mark to give effect to the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989 [Official Journal L 296 of 14.11.2003]. These two texts are designed to establish a link between the Community trade mark system and the international trade mark registration system of the World Intellectual Property Organisation (WIPO) The aim is to enable enterprises to obtain protection for their trade mark on the basis of the filing of a single application, not only throughout the Community, as a Community trade mark, but also in countries which had signed the Madrid Agreement (such as China).

Decision No 2003/793/EC covers Community Accession to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks. Regulation (EC) No 1992/2003 sets out the necessary provisions to give effect to this accession by amending Council Regulation (EC) No 40/94 on the Community trade mark. It deals with procedures and effects associated with:

• international registration based on an application for a Community trade mark;
• international registration designating the European Community.

APPROXIMATION OF THE LAWS OF THE MEMBER STATES AS REGARDS TRADE MARKS

Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [Official Journal L 40 of 11.2.1989]. This Directive aims to give registered trade marks the same protection in all Member State legislation.

See also

• Further information on the EUROPA thematic website on the EU Single Market.
• OHIM site (Community trade mark page)

Last updated: 05.12.2006