Community trademarks

Territory

Since 1 January 1996, it has been possible to file one application that is valid in all of the countries of the European Union. The European Trademarks Office, whose official name is the Office for Harmonization in the Internal Market (OHIM), is located in Alicante, Spain. All trademark registrations apply to all EU countries; it is not possible to limit the number of countries.

 

Procedure

An application for a Community Trademark must be filed with the Benelux Office for Intellectual Property or with the European Trademarks Office. In principle, all signs that qualify for trademark protection in the Benelux countries can also be registered as Community Trademarks. Not only EU residents may apply for Community Trademarks; the residents of almost all other countries may also file a Community Trademark application.

The application must be made in one of the official EU languages, including Dutch. A procedural language must also be chosen upon filing the application. The applicant may choose between French, German, English, Spanish and Italian. If trademark opposition proceedings are initiated at a later stage of the registration procedure, such proceedings will be conducted in the procedural language chosen by the applicant.

Upon filing the application, the older rights of existing trademark registrations in one or more European countries may be invoked. In that case such existing registrations must have been filed in the name of one and the same applicant and must be identical with or contained within the same goods and services as those for which the Community Trademark is registered.

It will then be established by means of an official investigation whether the application meets all of the requirements. An investigation into corresponding trademarks among the older trademarks that have been registered or applied for in almost all of the EU countries will also be performed. The outcome of that investigation will be sent to the applicant, after which the Community Trademark will be published. If the outcome is negative, the applicant must decide whether it wishes to continue the procedure. As in the case of a Benelux trademark, the European Trademarks Office may not refuse the application in the light of the older corresponding trademarks found. The European Trademarks Office, like the Benelux Office for Intellectual Property, may refuse a trademark application if, for instance, it is not distinctive or is merely descriptive of the goods or services.

At the European Trademarks Office the owners of older trademarks may oppose to the application, which is not possible at the Benelux Office for Intellectual Property. Such opposition proceedings take place at the European Trademarks Office and must be initiated within three months after the date of publication of the trademark.

If a trademark is registered as a Community Trademark, it is important for the trademark owner to have trademark surveillances with regard to subsequent applications for Community Trademarks, so that they can timely oppose an application.

If it becomes apparent that the applicant will not be granted a Community Trademark, it may convert the application for a Community Trademark into one or more national applications in the EU Member States. This may be done, for instance, because there is an older corresponding trademark in one of the EU Member States.

 

Period of validity

If a Community Trademark is registered, that registration will be valid for a period of ten years as from the date of application. The registration may each time be extended by ten-year periods.

 

Lapse of trademark registration

The Community Trademark registration may be cancelled if the trademark is not put to use within five years after the application or if it is not used within the EU for a period of five years without there being any proper reason for such non-use. The use must be related to the goods or service class for which the trademark was registered.

 

Costs

The costs and honoraria of filing a European community trademark are available upon request.

De Vries & Metman can advise and assist you in applying for a European trademark. De Vries & Metman can also perform the various searches and surveillances with regard to Community Trademarks.