The Community Trade Mark (CTM) allows an applicant to register a trademark valid in every Member State of the European Union with a single application. It was introduced as part of the harmonisation of the Internal Market in the European Union, the same project that gave rise to the Euro, as well as many other significant developments in economic regulation law.

It prevents the single economic market of the European Union being disrupted by businesses registering national trade marks in each Member State; such a situation could allow the trade mark holder to stop goods that they have released for sale in one EU country being later resold in another (so called ‘parallel imports’). The motivation for doing this would be to facilitate the marketing of goods to each country at a different price (in some countries, it is cheaper to bring a product to market, making it possible to sell the goods on for less), without worrying that the price would be undercut by third parties importing the goods from a different EU country.

The EU as a whole was keen to allow parallel imports wherever possible, because such a practice is conducive to competition, and in theory, better prices and better products overall. So in addition to making changes to the competition law applicable in Member States, the incentive of only making one convenient application to obtain trade mark protection throughout the EU was created.

The advantages of the Community Trade Mark

The CTM is certainly an appealing incentive to those looking to obtain protection across the European Union. The most attractive feature of CTM registration from a business perspective is that it offers trademark protection in all 27 Member States of the EU at a cost that is much lower than that of filing separate applications in each Member State. Besides this, it is a greatly simplified procedure, compared to submitting applications in each Member State. For example, the application need only be submitted in one language, and only one payment of fees needs to be made.

Furthermore, the management of the trade mark portfolio is much easier with a CTM than a series of registered trademarks across the EU; most would rather keep an eye on one renewal date than 27. Also, unlike many national marks, use of the trademark is not required to secure registration or renewal. And although the mark could in theory become vulnerable to cancellation after a five-year consecutive period of non-use, use on a reasonable scale in a single Member State is normally sufficient to maintain the validity of the CTM registration throughout the EU.

To sweeten the deal further, a CTM application that is refused registration at a supranational level may nevertheless be converted into individual national applications, maintaining the priority date of the application, meaning that nothing is really lost by trying to obtain protection.

The application procedure for the Community Trade Mark

An application for a CTM is made to the Office for Harmonisation in the Internal Market (OHIM) in Alicante, Spain. This office is responsible for administering the CTM, carrying out tasks such as the maintenance of the public register detailing registered marks and applications, as well as deciding on the validity of rights that are subject to challenges.

After an application has been examined, provided it is found to be compatible with the EU system of trademark law, it will be published in the Community Trade Marks Bulletin. During a period of three months after this time, third parties may lodge oppositions to the application, on the basis that it would be incompatible with a mark already registered in the European Union. Where no oppositions are received (or where any oppositions received are resolved), the mark will be added to the EU register and given the filing date as its effective date.

The Community Trade Mark and the Madrid international system

The European Union became a contracting party to the Madrid Protocol in 2004. This means that it is possible to designate a CTM as part of an international trademark application in the same way as for any other participant in the Madrid system. If a CTM included in a Madrid Protocol application is refused, it is still possible to convert that CTM into national applications in the EU Member States and pursue these as part of the Madrid application.

Next steps

European trademark registration through the Community Trade Mark offers a convenient platform from which to protect and develop your brand value in one of the most important markets in the world economy.

If you are considering filing for federal trademark registration in Europe, then RightGuard from Humphreys & Co. solicitors can help you. It offers a no-nonsense, click-and-buy interface to those looking to apply for trademarks anywhere in the world. Each country is individually priced, and can be paid for immediately through a secure online checkout. If needed, trademark owners are able to call on the support of an expert team of lawyers at any stage in the registration process.

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