Please note that the names Community Trademark and European Union trademark are used interchangeably as CTM is the former name while EUTM is the new name.
What is a Community Trademark?
A community trademark (CTM) is a single route to register your trademark in every European Union nation in one go. As registering community trade marks make the trademark owners operate in all 27 EU countries, thus CTM is considered a cost-effective way to trademark registration. Thus, getting a CTM will protect your mark from infringement and encourage international branding in 27 countries European Council Directive No. 4094 made the Community Trademark system in 1993. Moreover, CTM segregates trademarks for goods and services according to international standards.
Therefore, one CTM may apply to one class of goods and services or several, based on your single application. However, in 2016, the name community trademark was changed to European Union trademark.
How Long Does a Community Trademark Last?
A Community Trademark is valid in all EU nations for 10 years after registration. But after 10 years, it can be renewed for 10 years at once.
What are the Community Trade Mark Countries?
Under community trademark registration, the following 27 countries are covered:
- Benelux (Belgium, the Netherlands, and Luxembourg)
- Czech Republic
- Slovak Republic
The Community trademark office is situated in Alicante, Spain.
Procedure of Community Trademark Approval
The European Community Trade Mark Law
- CTM law was not a replacement but an addition to the trademark laws of member nations.
- The law established a comprehensive registration framework valid throughout the EU nations.
- Major advantages under CTM law are multiple-nation coverage, single trademark registration application for 15 nations, a single renewal after expiry, and exclusive jurisdictional powers for trademark infringement actions under CTM law.
- A Community Trademark application can be filed in any of the official languages of the EU. But, the application should also indicate a second language out of the five official languages, i.e., Spanish, German, Italian, French, and English.
- The proceedings related to opposition, invalidation, and revocation must be in one of the five official languages. However, parties can mutually decide to use some other language as well.
- If a party or both the parties want the post-application process to be in the English language, they will have to file their CTM application in a non–official language and then choose English as the official language.
- On the contrary, if the trademark filing is in English, you still need to choose a second official language for post-application proceedings.
- Trademarks that are only the shape of your products or those relying only on the characteristics of products can’t be registered as CTM.
Community Trademark Rights
The CTM registration provides monopoly rights to the trademark owner against third-party usage and trademark infringement. Here are a few important points about the CTM rights for the trademark owner:
- The third-party registration for some already registered trademarks prevents the consumer confusion that may arise due to the same or similar trademarks for the same or similar goods and services.
- The third part of use covers affixing an infringing mark to products or packaging, putting such products for sale, supplying infringing services, import, export, advertising, marketing, or records on business papers. Thus, the CTM system is an effective weapon against infringement, saving your brand’s reputation and investment.
Why Should You Get a Community Trademark?
The key benefits of having a community trademark are as follows:
- Pan-European protection of your registered trademark protection just by a single registration
- A cost-effective option as compared to the filing costs two or three national trademark registrations in EU Members
- The usage of a CTM registration in one EU nation automatically denies any revocation action based on non-use criteria
- Straightforward administration due to just one European TM registration instead
- There is no need to maintain and understand the trademark laws of multiple nations.
- Enhanced coverage, better operational opportunities, an international platform for business operation, and a larger consumer base for marketing
- As the CTM owner does not need to renew the trademark in every nation, renewal charges come down significantly.
- In the cases of successful refusal or opposition, the applicant has the option to convert the CTM application into national trademark applications. All this is possible while you retain the application filing date of the parent CTM
- If more members are added to the EU in the future, the scope of CTM registration will expand automatically to the new countries as well. Currently, Albania, Montenegro, North Macedonia, Serbia, and Turkey are candidate countries, in talks with the EU.
- Your business or company can be from a nation even outside the EU states.
- Member nations of the World Trade Organization and the Paris Union Convention can apply for Community trademarks.
- In case you already own a national trademark in a European Union member state, you can claim seniority of that mark while filing for a community trademark. This way, you can request a priority registration.
- If you want to register a “non-traditional trademark” such as holograms and scents, you don’t need to add a visual graphic of the proposed mark in your community trademark application.
What can you register as a community trademark?
Any distinctive sign that can be represented graphically can be registered as a trademark. This includes:
- 3D symbols
- Sound marks
What are the fees and other costs of Community Trademark Registration?
The application fee for CTM is €850 for one class and €900 for two classes. Apart from this, you need to pay €150 for each extra class added after the second class. You can apply to the EUIPO in Alicante, Spain, or the National Trademark Office of any EU member nation.
Do I Need a Lawyer for Community trademark Filing?
It depends on the level of knowledge and expertise you have about the process of registration. As the whole process is time-consuming and involves technicalities, most people hire a trademark attorney or lawyers,
What is the process of Community Trademark Application?
Disadvantages of a community trademark include:
- Community trademarks are unitary in nature meaning all or nothing. This means that a successful challenge against your trademark in any one of the 27 European nations will defeat the CTM application completely. Moreover, one can only assign a CTM in totality and not for particular EU nations.
- CTM registration applications receive a higher number of applications as the EUIPO doesn’t block them at the examination stage
- There is no scope of prior rights examination, the trademarks are at more risk of infringement and dilution. As a result, the CTM owner needs to be more vigilant and monitor the publication closely.
What are Trademark Search Reports?
Trademark search is an exercise before trademark filing to find out troublesome trademarks. These searches perform a comprehensive analysis through all registered and pending trademark applications to find any identical or similar applications. Although there is public trademark database in member states to conduct a trademark search, it is advisable to hire a professional trademark search firm.
Why Trademark Search is Important?
To avoid future oppositions, refusal of the application, or litigations; it is advisable to conduct a trademark availability search. By going through all the conflicting trademarks, you can take the right step whether to file for trademark registration or not.
How to Raise Opposition to a Trademark Application?
In European Union, a single opposition applies to all EU member states. Within three months of trademark publication, you can file an opposition in one of the five languages.
What if Someone Oppose My Trademark Application?
If someone submits an application in opposition against your trademark application, the trademark applicant has two choices:
- You can convert your trademark application.
- You have the option to change your application to one or more national applications in EU member states. These national applications will have the same filing date as your CTM mark application.
Moreover, an opposition is not possible for a national trademark that has been in existence for five years.
How to License Community Trademarks?
To allow a third party to use your community trademark, you will need to record the third party at EUTM. This license is applicable in all EU member states or particular nations, depending on your choice.
How to Initiate Action for Infringement of CTM?
The first point of action against unauthorized trademark usage begins with the country’s special court where the issue took place. The legal proceedings will take place according to the domestic laws of the particular nation.
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