A Guide to European Community Trademarks
An Introduction to European Community Trademarks
If your business currently operates within Europe or has the potential to do so within the near future, you may feel that UK Trade Mark Registration is simply not adequate for your business needs. With the power of today’s marketplace alongside promotional advantages such as social media and eCommerce, you may be trading outside a national boundaries sooner than you think.
In March 1994, the Office of Harmonization in the Internal Marketplace (OHIM) was created to offer a solution to business owners to secure their Intellectual Property across Europe within one application, where costly and time consuming singular applications were only available beforehand.
We have created this guide to offer information on what trademarks are, how they can benefit you and your business and why registration is important. For further detailed information we advise utilizing a registered Trademark Agent or Attorney.
What is a European Community Trademark?
European Trademarks (usually referred to as “Community Trademarks” or “CTM) are applications that cover 27 Trademark Offices via one application. Filed via the OHIM (Office of Harmonization in the Internal Market) in Alicante, a Community Trademark application saves the applicant time and money by avoiding filing 27 individual applications to secure your trademark rights across Europe. Further administration changes such as ownership changes and renewals can be done easily via one point of reference via the OHIM, rather than many for individual offices.
What can you trademark?
To be accepted, a European Community Trademark has to meet certain criteria, find out more about these here.
Who can Apply?
European (CTM) Trademark Applications can be filed by Individuals, Sole Traders, Partnerships, Limited Companies, Public Limited Companies (PLCs) and Limited Liability Partnerships (LLPs).
How long does a European “Community” Trademark last?
European Trademarks last for a total duration of ten years which commence from their filing date. Your Trademark can then be renewed indefinitely over 10 year cycles.
How to Register a European Community Trademark
The registration process of a European Trademark can be a minefield if not carefully and meticulously carried out.
Knowledge is Power, Searching is Everything.
Like many processes the initial groundwork conducted at the start of a Trademark process is vital. Before commencing with any application you will need to ensure that your application does not infringe on any other registered Trademark. Not conducting searches ensures that you are unaware of any examination or potential opponents that could arise and unless you are extremely lucky, many applications filed without the proper searches will usually result in failure.
Whilst there are many online searches available to check the availability of your Trademark, they will usually only highlight exact or very similar variants. Trademarks can be opposed by other similar registrations that feel your application could be deemed similar to their own and therefore potentially threaten their Trademark. This can lead to loss of fees and also further costs through opposition proceedings. A ‘Full Trademark Search’ or ‘IP Report’ can be conducted by most Trademark professionals and can ensure that you are aware of any potential pitfalls, prior to starting your application.
When considering a European Trademark Application you will need to ensure alongside other UK Trademark Registrations and European (or “Community”) Trademarks, individual European Trademark Offices are also searched. Whilst not automatically notified, other similar earlier Trademarks filed in individual member states can successfully oppose your application as you will be attempting to gain rights within that country via your Community Trademark application. Many searches will not include these individual countries, prior to commencing with any European “Community” Trademark Application ensure these individual Trademark Offices are checked. Our IP Report includes all relevant European Trademark Offices and can be sent within 24 hours, find out more.
When to Register
It is better to be proactive and seek to register your trademark early. If a search highlights that your chosen term is available, registering it there and then would be advisable. If you do not take the opportunity to secure your trademark at this point, you run the risk of another entity securing the trademark prior to you and owning the intellectual property rights to your name. This can then lead to you being enforced to change your name through a costly rebrand. Whilst you may hold prior use of the name, the burden of proof will fall on you to prove so which can lead to costly legal fees trying to enforce your position.
How much does it cost?
European Trademark Application costs can vary, mainly due to the number of classifications your application may require and also whether you seek to use representatives to manage your application. A standard Community Trademark Application includes up to three classifications within its standard application fee with additional classification fees applicable to applications with more than four classifications.
To enquire about our fee structure please click here or alternatively give us a call.
How long does it take?
A Community Trademark Application must pass two main stages in its process to be classed a registered Trademark. Any unforeseen events throughout this such as examination queries or opposition notices can cause delays with your application and therefore increase the approximate time scale.
It will take approximately 4-6 months to successfully register a Community Trade Mark application considering no examination delays or opposition proceedings are raised. Below we detail the stages of an application, found in ‘The Filing Process‘.
The European Community Trademark Application Process
1. Preparing an Application
Prior to filing any Community Trade Mark Application you will need to prepare all relevant information require at the point of filing to ensure a swift and appropriate Trade Mark Application.
You will need to identify:
- The type of trade mark you wish to secure (Word, Figurative, Figurative Mark containing Word elements, 3D Mark)
- Correct Classification Numbers
- Relevant Figurative Device (if required)
- Approved Class Terms within the respective Classifications selected
- Proprietor Type (Legal Entity, Individual etc)
- Incorporation Country
2. Filing Fees
Community Trade Mark Applications will vary on cost, due to the number of classifications that you intend to utilize within your application. The use of a Trade Mark representative will also include further costs (for further detail please see ‘The use of a Trade Mark Representative’ below).
Filing fees for Community Trade Mark applications start at around 900 Euros and will include up to three classifications within a standard filing fee. Additional classifications can also be added at the time of filing at a further additional cost. All registry fees necessary to be paid to the OHIM are VAT exempt.
3. Examination
Once the OHIM receive your application, it will be assigned to an individual examiner and begin the initial stage of the application process, examination.
The examiner will firstly conduct a search on relevant OHIM Trade Mark Registry to locate any existing earlier or pending Trade Marks that your application could highlight potentially conflict with and if so, will highlight this to your attention and may also notify the proprietor of the earlier Trade Mark raised.
Following relevant searches, your application will be examined in compliance with the requirements of the Trade Marks Act and will inform you of any issues not met by your application and any objections raised to the likelihood of registration regarding your mark. Alongside this, the terms stated within your classifications will also be reviewed to ensure all are valid class terms are currently accepted and are appropriately within the correct class numbers.
From the initial day of filing (usually referred to as a “filing date”) you should expect to receive examination findings within 4-8 weeks dependant on your application. Considering any objections raised are successfully overcome, the examination process will be successfully completed and be put forward for publication.
4. Publication
If the examination stage does raise any objections to your mark, your application will reach publication and the status of your application will change to ‘Application Published’.
With any Community Trade Mark application, your application is advertised for a three month after examination to allow other Trade Mark owners the opportunity to oppose your application or raise any concerns before you are granted your registration certificate. It provides any potential opponent with information surrounded your application including the Proprietor details, Filing Date, Trade Mark number and the intended goods and services.
5. Opposition
Any entity with suitable grounds may oppose a Trade Mark application during the ‘Publication’ stage of the process, if found admissible by the OHIM (Office of Harmonization in the Internal Market). A formal opposition (filed directly through the OHIM) must be done so within the three month publication period (earlier referenced in ‘Publication’).
Due to the costs involved with filing a formal opposition, it is not uncommon for the representative of the opponent (usually a Trademark Attorney or Legal Department within the Company) to send an informal letter requesting the points there opposition is based upon and any further requests to reach an amicable settlement i.e. Voluntarily withdraw your application, remove class terms.
If your application is opposed and you do not already have a Trade Mark Representative, it would be wise and recommend to utilize one at this point. Opposition proceedings can be extremely complicated and drawn out affairs where further costs can also be applicable.
If a mutually amicable solution cannot be found through the encouragement of informal negotiations, both parties may file evidence and counter-arguments and cross-examine the evidence of the other party.
For further information regarding Oppositions, please click here.of informal negotiations, both parties may file evidence and counter-arguments and cross-examine the evidence of the other party.
For further information regarding Oppositions, please click here.
6. Certificate of Registration
If no opposition is raised throughout your application or if an opposition has been decided in your favour and matters are concluded, your application will be allowed and the Office of Harmonization in the Internal Market will not consider any further challenges. You will receive a notice of successful registration and receive your Trade Mark certificate.
Your OHIM Trade Mark Certificate is an electronic Certificate and includes all relevant details surrounding such as the Trade Mark Name, Trade Mark Number, Proprietor details and Classifications gained, included with relevant European Union translations.
Your newly gained registered Trade Mark will last for a duration of ten years, commencing from your filing date. You will have to renew your registration indefinitely, over ten year cycles.
7. The Use of a Trademark Representative
Preparing, filing and managing a Community Trade Mark application is a complex process requiring broad knowledge of Trademark Law and the Office of Harmonization in Internal Market.
Using a representative to act on your behalf will bring additional costs in comparison to filing the application yourself. However the use of a Trade Mark representative will ensure your application is properly dealt with in order for your Trade Mark to be filed correctly, examination queries to be dealt with in a professional and timely manner and is particularly beneficial if a third party should challenge your application.
Different representatives will charge different amounts and also potentially charge at different intervals. Prior to using a representative, do some homework on their success and/or filing rate, prices and any additional fees they may charge throughout the process.
Especially with OHIM based applications, ensure your chosen representative hold “Key User” status. This means that they are in the top 250 registered representatives with the OHIM (the total number approximately stands at 55,000 registered representatives). If your first application, having a point of contact at the end of the phone not just via emails and online messages can be hugely beneficial to explain each process verbally and be there at the end of the phone if you require.
Maintaining & Enforcing your European Community Trademark
Maintaining your Community Trade Mark
Once successfully registered, your Trademark is an unrivalled acquirement within your business armoury and can be used as both a powerful weapon and a strong shield to protect your business name and identity. Ensuring that no other entities are able to use exact or similar variants of your Trademark assures your brand remains valuable. Whilst a registered Trademark gains you the power to enforce this, it does not provide you with automatic notifications on all potential conflicts surrounding the use of your brand.
It is your responsibility as a Trade Mark owner to act against other similar entities that may threaten your business activities and weaken the value of your Trade Mark. Trademark Examiners do not refuse applications on the basis of similarity to an earlier registered Trade Mark.
Whilst a Community Trade Mark includes all 27 countries within its registration, if an identical or similar application is filed to an individual Trade Mark Office (i.e. INPI French Trade Mark Office, UKIPO UK Trade Mark Office) you WILL NOT be automatically notified. 
Enforcing your Trade Mark
If you find that an entity is infringing your trade mark, we would recommend that you first contact the entity in question to see if the matter can be sorted out amicably. You may wish to send this directly yourself or alternatively use your Trade Mark Attorney or Representative to send this on your behalf. If unsure, seek professional advice with your Trade Mark Representative to firstly determine the likelihood of success and potential outcome.
In some cases the infringing company in question may not be aware that they are unlawfully using your Trade Mark, writing to them and indicating your registered Trade Mark and asking for reassurances an infringement will not be repeated may be enough if this situation.
If the potential infringement is more serious, for example the conflicting entity have attempted to secure an exact or similar Trade Mark to your own, you may wish to consult your Trade Mark representative about the possibility of formal opposition or cease and desist proceedings.