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a. Introduction

Council regulation No. 40/94 of December 20, 1993, related to the Community Trademark (CTM) came into force on April 1, 1996. The Community Trademark Office, known as the "Office for Harmonisation in the Internal Market" (OHIM), set up in Alicante, Spain, accepts filings for registration since January 1, 1996.

By using centralised proceedings in a single language, the Regulation makes it possible to grant an exclusive right, the effects of which will apply uniformly in all Member States of the European Union, thereby covering a market of more than 350 million consumers and in which over 3 million trademarks are currently registered. Their number increases annually by more than 400.000 new trademarks.

The Community Regulation is not intended to replace national legislations so national trademarks may coexist with the Community Trademark.

The user may, moreover, combine the various protection systems and thus avail himself of the advantages afforded by each system. We shall be pleased to advise our clients on this subject.

b. Community legislation

The provisions of the Community Regulation broadly draw their inspiration from the Uniform Benelux law, so our office has the advantage of being in a familiar legal environment.

c. Definition of the community trademark

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 company from those of other companies.

d.Filling a community trademark

Any natural or legal person including associations established under common law may file a Community Trademark. However, citizens of states which are not members of the European Union must be represented by an OHIM-approved professional representative.

Filing may be effected in any of the eleven languages of the European Union, among them: English, French, German, Spanish, Dutch, ... This filing can be performed, either at a national office or preferably directly at the OHIM. A list of the requested information and documents necessary to file a Community Trademark remains at your disposal at Office Van Malderen.

Unlike the International trademarks filed according to the Madrid Agreement, an application to register a Community Trademark does not have to be based on a prior national filing or registration. However, any national filing in any member State of the European Union may serve as the basis for a priority claim in respect of the Community Trademark.

A trademark which is protected in one of the Member States of the European Union either by national registration or by international registration may, moreover, at any time, form the basis of a claim of "seniority". The consequences are that the owner of the Community Trademark claiming seniority from a prior trademark which is identical in terms of sign, goods and/or services may surrender the prior trademark, for example fail to renew it, without loosing the benefit of the rights attached to this prior trademark.

e. Examination proceedure

This examination proceedure require_onces several successive steps which may result in the refusal of the application on formal grounds or on absolute grounds or even on relative grounds.

1. Examination of Formal Requirements

Once the Community Trademark has been filed, the filing particulars (date and number) will be communicated by the OHIM. Then the OHIM examines the formal requirements, such as the payment of the official fees, the classification of the goods and services, the reception of the power of attorney, ... and may invite the applicant to regularise the file within a specific period of time, otherwise the application will be refused on the basis of formal grounds.

2. Examination of Absolute Grounds for Refusal

The OHIM has the right for immediate refusal of filing on the basis of the following absolute refusal conditions:

• the trademark concerns signs that do not agree with the requirements (e.g. an odour cannot be filed, neither can a specific noise)
• the trademark is devoid of any distinctive character
• the trademark consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of the rendering of the service, or other characteristics of the goods or services
• the trademark is contrary to public policy or to accepted principles of morality
• the trademark is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services.

In the case of a refusal, there always remains a possibility to argue the case - without any guarantee for success.

3. Search

An official search will be carried out among prior Community and relevant national trademarks.

The OHIM itself will carry out a search among the prior Community trademark applications and registrations. Furthermore, in most of the fifteen EC-members an official search among prior trademarks is carried out under the national and international trademarks that are registered. Exceptions to this rule are Germany, France, Italy and in some cases Ireland.

The OHIM will forward the search results to the applicant without delay.

A prior trademark mentioned in the search report can be an identical or similar trademark, filed or registered trademark for similar products and/or services. While the existence of prior rights may be a risk for your own trademark registration, they form only relative grounds for refusal.

This means that only the interested parties (e.g. the owners of the prior trademark) can ask for the nullity of your trademark. OHIM on the other hand is not allowed to take these prior rights into consideration by virtue of its office.

Nevertheless, it is important to know of the existence of any prior rights, which could be considered as a bar for using your own trademark.

Afterwards your trademark will be published and owners of earlier identical or very similar Community trademarks will be informed.

4. Opposition

Within three months from the publication date, any owner of prior rights in one of the Member States of the European Union may lodge an opposition against registration of the Community Trademark if he is of the opinion that the latter infringes his rights.

An opposition can only be based on relative grounds (existence of similar or identical prior rights) and not on absolute grounds. However, the opposing party has the possibility, in the opposition proceedings, of making observations related to absolute grounds. He can do this only in a formal manner, without making it part of the actual discussion.

An opposition has to take place in one of the official languages of the OHIM, these being English, French, German, Spanish or Italian.

The OHIM grants the involved parties a period of two months ("cooling-off period") renewable as many times as wanted for mutual negotiation.

f. Registration

If this negotiation leads to a settlement with the opponent, the OHIM will progress to register the Trademark.

g. Refusal on relative grounds

In case that no settlement is obtained with the opponent, the real opposition proceeding will start and could lead to the refusal of the community trademark on relative grounds.

It should be noted that the losing party in an opposition proceedure must bear all the costs incurred by the other party in this proceedure. It is thus important to ensure that oppositions are well founded.

On the other hand, given that the OHIM does not raise objections on relative grounds, the owners of trademarks should closely monitor the publication of trademarks with a view to a possible opposition. The more so since the Community Regulation provides that an opposition is not acceptable after having tolerated a specific trademark over five consecutive years.

h. Appeal

All parties to a proceedure that has resulted in a decision may appeal against this decision. The appeal is lodged before the chambers of appeal of the OHIM. The decision of the chambers of appeal may, in turn, be the subject of an appeal before the Court of First Instance of the European Court of Justice, the headquarters of which are located in Luxembourg.

i. Conversion

The party applying for a Community Trademark or the owner thereof may request conversion of the trademark into a corresponding national trademark, particularly in the event of a refusal on absolute grounds or relative grounds. National trademarks converted in this way retain the date of filing of the initial Community Trademark but are subject to payment of national fees.

j. Obligation of use

After registration, the owner of a Community Trademark may forfeit his rights if the mark has not been the subject of proper use over a continuous five-year period. However, it is unnecessary for this use to extend over all the member States of the European Union, local use in one country being sufficient to safeguard rights.

k. Advantages and drawbacks

The applicant will have to make the difficult choice between the Community Trademark and the conventional channels (national or international trademark). A systematic option is not advised and, in each particular case, it will be necessary to make a careful analysis of the advantages and drawbacks of the Community Trademark. These are :

Advantages

• it covers a vast market of consumers
• it is obtained by means of a single and centralised filing and registration proceedure
• it gives rise to uniform rights in all countries of the European Union
• registration fees are lower than the accumulated fees of a bundle of corresponding national trademarks (we believe that a Community Trademark should be considered when protection has to cover more than 4 countries in the European Union)
• in the event of a refusal, the Community Trademark may be converted into national trademarks
• it is not compulsory to use the Community Trademark in all countries in order to safeguard the rights attaching thereto
• the claim of seniority in respect of a relevant national trademark makes it possible to maintain the rights in the future without renewing it

Drawbacks

• the Community Trademark is highly vulnerable to oppositions, given that a national local right may be invoked in opposition against it
• refusal in one country leads to nullity over the entire territory of the European Union
• the costs incurred by conversion into national trademarks may be quite substantial

We are henceforth available to advise our clients and assist them in their choice between the various possible ways of protecting their trademarks.

Annex I: Filing requirements

In order to file your trademark, the following information and documents are requested:

• name and address of the applicant, mentioning its legal form in case the applicant is a company
• a power of attorney, signed by an authorised person, mentioning name and function of the signatory
• in case of a figurative trademark, at least 8 copies of good printing quality (preferably laser, offset or bromide) having the following dimensions: maximum 8 x 8 cm and at least 1,5 x 1,5 cm
• a broad and complete description of the products and/or services offered under the trademark. Consequently, Office Van Malderen will take care of the correct classification thereof. Before the final filing of the trademark, the proposal for classification will be transmitted to you for approval. It has to be noted that although Office Van Malderen takes all due care to propose a correct classification, it is possible objections are raised. These can be overcome by argumentation during the later stages of the proceedure
• information concerning priority or seniority including date, number, country and a copy of the priority filing or relevant certificates, if Office Van Malderen was not responsible for the prior filing.

Annex II: List of the member countries of the community trademark

Austria (AT)
Belgium (BE)
Germany (DE)
Denmark (DK)
Spain (ES)
Finland (FI)
France (FR)
Great Britain (GB)
Greece (GR)
Ireland (IE)
Italy (IT)
Luxembourg (LU)
The Netherlands (NL)
Portugal (PT)
Sweden (SE)