Use and the Community Trade Mark

By the end of 1999, approximately 62,000 CTM applications had been registered. Mere registration however is not enough, as a CTM mark must be "used" in order to remain valid. The CTM Regulation contains many provisions relating to the necessity of using a trademark, but none required prior to registration, as in the United States. For instance:

• A CTM can be canceled if not used for a continuous five-year period or used in a misleading manner.
• One ground for CTM Opposition is that a CTM is confusingly similar to a common law (non-registered) trademark which is used in the normal course of business and has more than local significance.
• To be registrable, a CTM mark must be distinctive. However, if the mark is used and has acquired distinctiveness, or secondary meaning, it may overcome a "non-distinctiveness" objection.
• Prior owners of "national" rights may prevent the use of a subsequent CTM, but not its registration.

United States v. European Union

In the EU, it is possible to file a CTM for a very "broad" list of goods or services. In the U.S., by contrast, a very "specific" identification of goods and services is required (i.e., clear and concise terms specifying the actual goods or services offered or intended to be offered). In the EU, for instance, indefinite terms such as "accessories," "devices," and "products" are generally acceptable under EU practice. Therefore, before sending instructions for filing CTM's, US applicants may select a broad description, preferably using terms found in the Nice International Classification of Goods. However, the CTM mark will be "vulnerable" to third party attacks for goods or services which are not later used.

Retail Services - Now Accepted by the CTM Office

In a decision of March 12, 2001 by the President of the CTM Office, trademark applications for "retail services" will now be accepted.

European Union Enlargement

The following countries are presently in advanced negotiations for membership in the European Union: Cyprus, Czech Republic, Estonia, Hungary, Malta, Poland, and Slovenia. The target date for entry of each varies between 2003 and 2006.

Ratification of the Madrid Protocol by the U.S.

As is by now well known, the U.S. has announced that it intends to ratify the Madrid Protocol. Effecting an international registration under the Madrid Protocol has considerable cost benefits for a U.S. applicant. For instance, the cost for registering in 10 countries could cost at up to US$14,000, while under the Madrid Protocol the total cost would only be about US$4,700. This international registration also has the advantage of needing only a single application which can be extended to as many of the 46 countries currently participating in the Madrid Protocol. However, under this international registration scheme, and similar to the U.S. Trademark Act (as amended), a very specific identification of goods and services is required, and use is required prior to registration (unlike the European Union CTM).