European Community Trademark20 September 2006
by eub2 -- last modified 23 January 2013
The Community Trade Mark and the Community Design both grant their proprietors a uniform right valid in all Member States of the European Union by means of one procedural system. Free Community Trademark and Design search - in association with OAMI-ONLINE, the server of the Office for Harmonization in the Internal Market (Trade Marks and Designs).
The Community trade mark
Trade marks such as words or figurative marks are an essential part of the "identity" of goods and services. They help deliver brand recognition, in logos for example, and play an important role in marketing and communication. It is possible to register a variety of trade marks including words, other graphical representations, and even sounds. Rights owners have a choice of obtaining protection on a country-by-country basis, or using international systems.
The Community trade mark (CTM), administered by the Office for Harmonization in the Internal Market (OHIM), was introduced in 1996 to cover the whole of the European Union and is valid in all 27 EU Member States. To date, OHIM has registered more than one million trade marks on behalf of hundreds of thousands of companies from all over the world, and this total is increasing rapidly every year.
What is a Community trade mark (CTM)?
A CTM is a trade mark valid across the European Union, registered with OHIM in accordance with the provisions of the CTM Regulations.
Scope and validity
A CTM is valid in the European Union as a whole. It is not possible to limit the geographic scope of protection to certain Member States.
A CTM is valid for 10 years and can be renewed indefinitely for periods of ten years.
Level of protection
A CTM confers on its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services as those protected by the CTM.
The CTM system provides for one single registration procedure, consisting of:
- a single application
- a single language of procedure
- a single administrative centre and
- a single file to be managed.
The CTM grants its owner an exclusive right in the 27 member states of the European Union at a reasonable cost.
After any future enlargement of the European Union, any CTM registered or applied for will be automatically extended to the new member states without formality or fee.
Enforcing your rights
A CTM grants its proprietor an exclusive right to prevent unauthorised use of the mark in trade without his/her consent. More specifically, the proprietor is entitled to prevent unauthorised third parties from: putting the registered CTM onto their goods or packaging; offering goods, putting them on the market or stocking them for commercial purposes using the registered CTM; offering or supplying services carrying the registered CTM; importing or exporting goods under it; and using it on business papers and in advertising.
If an unauthorised third party engages in any of these practices, it is guilty of infringing the exclusive right of the proprietor.
The proprietor of a CTM can act against these infringements by taking measures expressly provided for under the CTMR in relation to disputes concerning the infringement and validity of CTMs, and in particular via:
- Proceedings at the Community trade mark courts established under the CTMR
- Filing requests for action with EU customs authorities. This administrative procedure permits proprietors of a CTM to request the EU customs authorities to retain suspected counterfeit goods while under their control.
Maintaining your mark
CTMs shall be put to genuine use in the Community within a period of five years following registration (Article 15 CTMR). Genuine use may be found when the mark has been used in only one part of the Community, such as in a single Member State or in a part thereof. Any person (legal or natural) can protect their registered CTM against revocation on the grounds of lack of use – provided it is put to genuine use in the Community after the initial five-year post-registration grace period or if there are proper reasons for such non-use.
Thus, the best defence against revocation action is pre-emptive: non-generic, non-misleading, genuine and continuous use of the Community trade mark at all times. Use it or lose it!