Community Trade Mark (European Union) Trademark Application
Recent developments in the European Union (EU) have opened up an opportunity for trade and service mark owners, wherein one may register a mark as a Community Trade Mark (CTM) under the new European Union Trademark Law. The CTM is designed to provide trademark coverage in all countries which are signatories to the Treaty Establishing the European Economic Community of March 25, 1957.
The EU presently consists of the following 15 countries:
Cyprus, Malta, Switzerland, and Turkey have also applied for membership in the EU, but are not yet members. Thus, applications filed now will provide no protection in these countries.
Nature of the CTM
The CTM has a number of interesting features and consequences, among them:
A single CTM application, costing about US$2,500, begins the process of protecting a mark in all 15 member countries of the EU. A final registration fee of about the same amount will fall due about one or two years later if the application is allowed. Trademark owners presently incur comparable expenses filing for registration in four or five countries of the EU. The costs associated with oppositions, objections, or other unusual circumstances, if any, is additional to these costs.
When the time comes to renew the resulting registration in 10 years, a single renewal application of about another US$2,500 will fall due, again about the cost of maintaining registrations in four or five individual countries of the EU.
In the event the trademark owner wishes to amend, assign or license a mark, a single recordal may be filed for the entire EU, rather than filing in individual countries. However, licenses may be recorded in individual member states if desired.
Those with existing registrations in the EU may look forward to allowing such registrations to lapse once registration of the CTM is complete.
To remain valid, a CTM need not be used in every member state; a "genuine use" of a mark in a single country of the EU will suffice to support a registration covering the entire EU. In contrast, many presently existing trademark registrations in the EU are vulnerable to attack for failure to use in the country of registration.
The law establishing the CTM also provides that a CTM will not be subject to cancellation for a period of five years after registration. At the same time, a trademark owner may claim the seniority of prior registrations in member countries. These provisions together effectively "buy" a five year period of incontestability for existing marks.
However, as with many existing European trademark laws, a use of the mark as registered must take place at the latest five years after the registration to maintain the CTM, and use cannot be interrupted for more than five years.
If a CTM application is refused, or if the CTM registration is invalidated, it will be possible, in most circumstances, to convert the CTM to national trademark applications in the EU member countries, retaining the original application date of the CTM.
The CTM may be difficult to obtain and could be vulnerable. Any pre-existing registered trademark in one of the national registers will be a possible bar to registration, or it may support invalidation of the CTM once registration is complete. However, as noted above, it will usually be possible to convert a failed CTM into national applications.
A CTM is similar in other respects to registrations in some of the individual member countries. For instance:
A CTM will not simply wipe out the rights, if any, of others based on use (as opposed to registration) of a trademark or trade name locally. Thus, it is possible that, having secured a CTM, one may be prevented from utilizing the registered mark wherever such use has been established.
Trademark owners may of course apply for registration of their marks at any time. However, we believe there is a substantial benefit to those who apply early.