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1. What is a trademark? 2. What is a product/good or a service? 3. Why protect your trade mark? 4. Why a CTM (Community trademark)? 5. Can I have a CTM be valid just in some Member States? 6. What protection do I obtain through a CTM? 7. Can a trademark be registered individually in each Member State if protection throughout the whole EU is not sought? 8. What is the difference between a design and a trademark? 9. What does the obligation to use a trademark mean? 10. Can I use my trademark before it is accepted for registration? 11. Do I obtain protection from the moment I file my CTM application? 12. What is a Community trademark (CTM)? 13. Do I have to use ® or TM to show my CTM is registered? 14. Does the CTM prevail over national trademarks? 15. Is there an all - or - nothing principle if a ground for refusal applies only with respect to one Member State of the Community? 16. Once my CTM is published, does it mean that it will be registered? 17. Which kind of signs may be registered as a trademark? 18. Which signs may not be registered as a trademark? 19. What is the procedure for the registration of a CTM? 1. What is a trademark? A trade mark is a distinctive sign used by an individual, business organization or other legal entity to identify its products and/or services, and to distinguish its products or services from those of other entities.
2. What is a product/good or a service? Product/Good: any kind of item which may be traded.
Service: the provision of activities in accordance with human needs. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement) serves to determine the scope of protection of trade marks.
3. Why protect your trademark? The trademark of a product or service can be synonymous with the branding and image of a company and can become an asset with monetary value that could increase. If you do not apply for protection others may benefit from your investments. The only way of obtaining the full right over a trademark is by registering it. 4. Why a CTM (Community trademark)? The CTM system consists of one single registration procedure which grants to its owner an exclusive right in the 27 Member States of the European Union. 5. Can I have a CTM be valid just in some Member States? No, a CTM has a unitary character. A CTM application and a CTM are valid in the European Union as a whole. The application and the ensuing registration extend automatically to all 27 Member States of the European Union indivisibly. It is not possible to limit the geographic scope of protection to certain Member States. 6. What protection do I obtain through a CTM? A CTM confers on its proprietor an exclusive right therein. The proprietor is entitled to prevent all third parties, who do not have his consent, from using in the course of trade the same or similar signs for identical or related goods and/or services as those protected by the CTM. 7. Can a trademark be registered individually in each Member State if protection throughout the whole EU is not sought? Yes, a national registration can be obtained. However, if registration has previously been refused by OHIM, it is likely that registration will not succeed in those Member States where the Community trademark application has not been considered to be eligible for registration. 8. What is the difference between a design and a trademark? The essential function that they perform is different:
A design is essentially intended to determine the shape of a product (mostly, to decorate a product).
A trademark is also applied to the product. The main function of a trademark is to identify a particular trade origin in connection with specific goods and/or services. 9. What does the obligation to use a trademark mean? It means that a Community trademark has to be put to genuine use in the Community in connection with the goods or services in respect of which it is registered within a period of 5 years following registration. 10. Can I use my trademark before it is accepted for registration? Yes, a trademark may be used at any stage, even before filing the application. However, this use does not guarantee the registration of the trademark. 11. Do I obtain protection from the moment I file my CTM application? A CTM is obtained by registration. However, the CTM application entitles the applicant to file oppositions against subsequent trademark applications which may be identical or similar to his trademark for identical or related goods and/or services. Additionally, a CTM application may be transferred, subject to rights in rem, levied in execution, involved in insolvency proceedings and licensed, among other possibilities. 12. What is a Community trademark (CTM)? A CTM is a sign for identifying and distinguishing goods or services valid across the European Community, registered with OHIM in accordance with the conditions specified in the CTMR. 13. Do I have to use ® or TM to show my CTM is registered? No, there is no legal basis which makes such use compulsory. However, the proprietor of the trademark may freely choose to use them. 14. Does the CTM prevail over national trademarks? The CTM system leaves the national trademark systems of Member States (as far as Belgium , Luxembourg and the Netherlands are concerned, the Benelux trademark system) unaffected. Business enterprises are free to file national trademark applications, a CTM application, or both. The large number of national trademarks already existing and registered in the Member States remain valid. It is entirely up to the strategy of the applicants and proprietors of trademarks whether they want to rely exclusively, or in addition to national trademark rights, on the CTM protection.
However, earlier national trademarks constitute earlier rights against a CTM, and vice versa. The Office does not examine such earlier rights of its own motion. Only the proprietor of the earlier right can raise this issue, either by filing an opposition within 3 months of the publication of the CTM application, or following the registration of the CTM by filing an application for a declaration of invalidity on relative grounds. 15. Is there an all - or - nothing principle if a ground for refusal applies only with respect to one Member State of the Community? Yes. The Office refuses a CTM application if a ground for refusal exists only in part of the Community. If, for example, the trademark consists of the designation of the product in one official language of a Member State of the Community, the Office will refuse the CTM application.
Earlier rights, raised in an opposition or in an application for a declaration of invalidity, prejudice the registration of a CTM even if they only exist in one Member State of the Community. The effects of this situation, however, should not be exaggerated. Cases where an application must be refused because the mark constitutes a non distinctive or a descriptive or generic term in only one language of the Community (and not one of their major world trading languages) are not so frequent. If an earlier right in only one Member State exists, it goes without saying that this right can not be invalidated by the later filing of a CTM by another person. The opposition or invalidity procedure before OHIM will, in such cases, offer ample leeway for an amicable settlement.
Lastly, a CTM application which has been refused, or a CTM which has been declared invalid or revoked, may be converted into national trademark applications in all the Member States of the European Community in which the ground for refusal does not apply. The ensuing national trademark applications will retain the filing date of the CTM application. 16. Once my CTM is published, does it mean that it will be registered? A mark shall not be registered as a CTM if a relative ground for refusal applies.
An opposition must be filed within three months of the date of publication of the CTM application by the proprietor of the earlier right.
The following constitutes an earlier right:
* an earlier CTM or a CTM application;
* an earlier national trademark or a national trademark application filed or registered in a Member State of the European Union;
* an international registration under the Madrid Agreement or the Madrid Protocol with effect in a Member State of the European Union;
* a non-registered mark or another sign used in the course of trade of more than mere local significance valid in a Member State ;
* a trademark which is well-known in a Member State (within the meaning of Article 6 bis of the Paris Convention).
The CTM application or the CTM will be refused on the basis of an earlier mark,
* if it is identical to the earlier trademark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier mark is protected;
* if because of its identity or similarity to the earlier trademark and the identity of similarity to the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark;
* if it is identical or similar to an earlier trademark and is to be registered for goods or services which are not similar to those for which the earlier trademark is registered, where the earlier mark has a reputation and where use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark .
It should be noted that where a ground for refusal exists in any part of the European Union, the CTM may not be registered. For example, if there is an identical national trademark for the same goods or services in just one of the Member States, the CTM will, on opposition of the proprietor of that earlier mark, not be registered.
These grounds for opposition also constitute grounds for a declaration of invalidity that may be requested after the registration of the CTM. 17. Which kind of signs may be registered as a trademark? A trademark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Therefore, signs which may be registered as a trademark include the following:
* word marks including letters, numbers or combination of letters, numbers and words;
* figurative marks, whether or not including words;
* figurative marks in colour;
* colours or combinations of colours;
* three-dimensional marks;
* sound marks;
The application must contain a graphic representation of the mark. 18. Which signs may not be registered as a trademark? Although fulfilling the definition of a trademark, a sign may not be registered as a trademark if an absolute ground for refusal applies, namely if the sign:
* is devoid of any distinctive character;
* exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
* has become customary in the current language or in the bona fide and established practices of the trade;
* is contrary to public policy or to accepted principles of morality;
* is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
Other absolute grounds for refusal may relate to the shape of the goods, the origin of alcoholic beverages, agricultural products and foodstuffs, and certain official emblems.
For cases where the trademark lacks distinctive character, serves to designate the kind, quality, quantity etc., of the goods or services, or has become customary in the current language or in the practices of trade, the objection may be overcome if it is shown that the trademark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
If the trademark is refused for registration on these grounds, it will not be published. 19. What is the procedure for the registration of a CTM? The procedure for the registration of a CTM is an examination procedure which comprises the following three main parts:
1. firstly, examination of the application, which includes whether or not a filing date may be accorded, the formalities examination and the examination as to absolute grounds for refusal, during which search reports are established.
2. secondly, publication of the application.
3. thirdly, the procedure up to registration which may comprise opposition proceedings.
The first part of the procedure starts with the receipt of the application, either directly at OHIM or via a central industrial property office, and involves:
* examination as to whether or not a filing date may be accorded, the classification check of the goods and services designated in the application;
* sending the list of goods and services to the Translation Centre for Bodies of the European Union ( Luxembourg );
* the establishment of the Community search report, the transmission of the application to central industrial property offices in Member States, for searches in their national registers and the transmission of all reports to the applicant or his representative;
* examination as to absolute grounds for refusal.
OHIM will not examine ex officio relative grounds for refusal. These may be raised only by third parties in opposition proceedings or in cancellation proceedings after registration of the CTM.
The second part of the procedure is the publication of the application in part A of the CTM Bulletin, where the result of the examination by OHIM has been positive.
The third part of the procedure is reserved for third parties to invoke their earlier rights in opposition proceedings. Opposition may be lodged within three months following the publication of the CTM application. Where the outcome of opposition proceedings is positive for the applicant, or where no opposition has been filed, the CTM will be registered.
Appeal proceedings constitute a special procedural phase. Appeals can be filed during the aforementioned parts of the procedure against decisions of the Examiners, the Opposition Divisions and the Administration of trademarks and Legal Division. An appeal must be filed within two months of the notification of the decision. A decision which does not terminate proceedings as regards one of the parties can be appealed only together with the final decision, unless separate appeal is allowed in that decision. The Boards of Appeal are competent for taking decisions regarding appeals.
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Trademark FAQ