There are three major types of Trademarks, namely the National, Community (European) and International Trademarks. In this article I will provide an overview of the law provisions and regulations governing Community Trademarks.
Community Trademarks – as the name suggests – offer protection that extends to all Member States of the European Union.
The responsible body that receives and examines the Applications for the registration of Community Trademarks and any related Applications is the Office of Harmonized Internal Market (OHIM) which is located in Alicante, Spain. Multiple choices as to how one can make an Application are offered. It is stipulated that Applications may be filed electronically, via mail and/or via facsimile. This is beneficial and important when time is of essence and there is a need to quickly secure the filing date.
The main EU directive approximating the Community Trademark law of EU Member States is the CTMR - Community Trademark Regulation (EC) No 207/2009 which governs the Community Trademark system. The said regulation codified the Council Regulation (EC) No 40/94 of 20 December 1993 along with its numerous amendments.
The most important and distinctive feature of the Community Trademark system is its unitary nature. If the application is successful, the applicant is granted automatic protection in all Member States of the European Union via a single Application.
One may argue that this system cannot replace the need of filing an International Application depending on the strategy and target markets of the applicant. We do agree, as it may indeed complement the other systems rather than replace them. For example, a Community Trademark may be used as the base (originating) for an international Trademark Application. Also, the European Union may be designated in an International Application.
Although the Office has five official languages (English, French, German, Italian, and Spanish), a Community Trademark Application may be filed in any language of the European Union. The procedure however requests the applicant to select a second language chosen from the five official languages of the Office. Any communication with the Office is conducted in the language of the submitted Application, if the language used is one of the five official Languages of the Office. If the language used is not one of the five official languages, then the language used from there onwards is the selected second language and the procedure is conducted in that second language.
Who can apply
Besides the language provision which is helpful, another major distinctive feature of this system is that there is no restriction as to who can apply. As per the related provision, any natural or legal person, including authorities established under public laws, may file for and own a Community Trademark.
Whereas an applicant for an International Trademark Application must be a national of, or domiciled in, one of the Member Countries of the Protocol or have an industrial or commercial establishment in one of the Member Countries, this is not a prerequisite for Community Trademark Applications.
The Nice Classification (NCL) is an international classification of goods and services applied for the registration of marks. It was established in 1957. The Office has adopted the Nice Classification for classifying goods and services.
The Community Trademark system is a multiple class system which means that multiple classes may be chosen per Application.
Once registered, a Community Trademark enjoys protection for a period of 10 years from the filing date of the Application. The Registration may be renewed indefinitely for ten-year periods. A six-month extension for renewal can be obtained at a fee.
Evidence of use
As in Cyprus Law (and most of the Commonwealth Countries), evidence of actual use is not required either during the registration Application or the renewal.
Nonetheless, if the mark is rejected for lack of distinctiveness then evidence of use can be submitted to support any reply as to the objection. So it may be that Article 4 of the Community Trademark Regulation provides that a sign is considered as a sign that may be protected as a Community Trademark:
- If it can be represented graphically; and
- If it distinguishes the goods and services of one undertaking from those of another.
Once the applicant is granted protection and the mark is registered, the applicant enjoys an exclusive right to prevent any unauthorized party from any commercial use, (without the applicant’s consent), of:
- Any sign which is identical in relation to goods or services that are identical;
- Any sign where a likelihood of confusion exists, because of its identity or similarity with the Community Trademark and the identity or similarity with the goods or services;
- Any sign which is identical or similar to the Community Trademark in relation to goods or services which are not similar, where the latter has a reputation in the Community.
Community Trademark Applications may be rejected on the basis of absolute grounds of refusal (non-exhaustive). Specifically Article 7 of the CTMR states that,
- Trademarks that consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
- Trademarks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, (hereinafter referred to as the ‘Paris Convention’);
- Trademarks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given;
- Trademarks that are devoid of distinctive character;
- Trademarks consisting exclusively of signs or indications that serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or the provision of services, or other characteristics of the goods or services;
- Three-dimensional shape marks that result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods;
- Trademarks that are contrary to public policy or accepted principles of morality;
- Deceptive Trademarks, in particular as to the nature, quality or geographical origin of the goods or services;
- Geographical indications of wines or spirits that do not have such origin.
Once the Office examines the Application for absolute grounds to refuse, the mark is then published for a specified period. In that period oppositions by third parties may be filed.
Examination and assessment of any prior rights that may conflict the Application are performed upon such opposition.
Oppositions may be based generally on four grounds:
- Owners of prior rights may file an opposition as to the registration of the mark. Owners of prior and earlier Community Trademark registrations or Applications and/or National Trademark registrations or Applications to an EU Member State and/or International Trademark registrations that have effect in an EU Member State; and/or Trademarks that are well known in a Member State in the sense of Article 6bis of the Paris Convention, can file such an opposition.
- Owners of prior rights can file an opposition for a similar and/or identical mark which designates different goods and services. Nonetheless, in order for such an opposition ground to succeed, the prior owner must prove reputation in his coverage area(s), but also that the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the prior Trademark or to the applicant and/or that the contested mark is used without due cause.
- The third possible opposition ground is ownership of a non-registered Trademark or other sign used in the course of trade of more than mere local significance if, pursuant to the law of the Member State governing the sign, it entitles its owner to prohibit the use of a subsequent Trademark (Article 8(4) of the CTMR).
- The fourth opposition ground is based on a situation where a Community Trademark Application has been filed by the agent or representative of a Trademark owner without its consent (Article 8(3) of the CTMR).
An opposition filed based on the ground 1 above must demonstrate that there is a likelihood of confusion between the two marks. Such likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, including:
- The similarity between the signs;
- The similarity between the goods and services;
- The relevant territory;
- Prior coexistence of the two marks; and
- The target consumer groups.
Any decision of the Office may be appealed to the OHIM Board of Appeal. Subsequently, any questions of law can be appealed to the ECJ which has jurisdiction only to annul or alter the contested decision but not to rule on the merits of a claim that the OHIM has not already considered.
Our Law Firm has successfully handled all types of Community Trademark Applications and is always happy to offer any assistance.
For further information please contact Mrs. Ermioni Pavlidou.