The European Community Trademark Application Process
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
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.
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.
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.
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.
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.
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.
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