The Community Trade Mark

7. The Community Trade Mark - Further Important Aspects :

7.1 Duration and Renewal

[Art.46, Art.47,Rule 30]
The duration of the Community trade mark registration is ten years from the date of filing of the application. The Community trade mark may be renewed indefinitely for further ten year periods. No evidence of use must be filed together with the request for renewal.

7.2 Use of the Community Trade Mark

[Art. 15, Rule 22]
An important aspect of the Community trade mark is the requirement for genuine use in the territories of the EU. Within a period of five years following the registration of the Community trade mark, the proprietor must put the Community trade mark to genuine use in the EU for the goods or services for which the Community trade mark is registered.

During these first five years following the registration of the Community trade mark, the so-called grace period, third parties may not request proof of use in opposition or infringement cases and no third party may challenge the Community trade mark on grounds of non-use. However, after this initial five year period, proof of use may be requested at any time by third parties and the proprietor must then be in a position to furnish proof of use for a substantial period of time within the last five years prior to the respective requests.

In this context, it is important to note that use in a single EU Member State may be considered sufficient to fulfil the requirements for use in the whole EU. Among others, the following is considered as proper use:

• use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the registered mark,
• affixing the Community trade mark to goods or packaging in the EU solely for export purposes, and
• use of the Community trade mark with the consent of the proprietor, e.g. use by a licensee.

If the proprietor of a Community trade mark has not commenced proper use within a period of five years after registration or if such use has been suspended during an uninterrupted period of five years, the following consequences will apply unless there are proper reasons for non-use:

• if an opposition is based on a Community trade mark which has been registered for five years at the time of publication of the opposed Community trade mark application, the proprietor of the opposed application may contest use of the opposition trade mark. If the opponent cannot file evidence in order to prove proper use, the opposition will be rejected.
• The same applies for infringement proceedings where the supposedly infringed trade mark has been registered for more than five years.
• Furthermore, non-use of a Community trade mark which has been registered for more than five years may be a ground for revocation either through the filing of an application with the OHIM or on the basis of a counterclaim in infringement proceedings.

7.3 Amendments of a Community Trade Mark Application

[Art.44, Rules 13 and 26]
A Community trade mark application may only be amended at the applicant's request by correcting the name and address of the applicant, errors of wording or of copying or obvious mistakes, provided that such amendments do not substantially change the trade mark. The name of the applicant can be amended freely if the change is not the consequence of a transfer.

It is also possible to amend the list of goods and services as long as this does not cause an extension of the list of goods or services. The amendment has to be requested in one of the two languages of the Community trade mark application. Where the amendments affect the representation of the trade mark or the list of goods or services and are made after publication of the application, the trade mark application shall be published as amended.

7.4 Alterations of a Registered Community Trade Mark

[Art.48, Rule 25 and 26]
Basically, it is not possible to alter a registered Community trade mark. However, the Community trade mark registration may be altered with respect to the name and address of the proprietor as long as such corrections do not substantially affect the identity of the trade mark. The alteration is made at the proprietor's request which has to be filed in one of the five languages of the Office. The publication of the registration of the alteration contains a representation of the Community trade mark as altered. Third parties whose rights may be affected by the alteration, have the possibility to challenge the registration of the alteration within a period of three months following publication.

7.5 Restriction and Withdrawal
[Art. 44]
An applicant may restrict or withdraw his application for a Community trade mark at any time. If he does so after publication of the application, the restriction or withdrawal will also be published.

7.6 Division

[Art. 44a]
A Community trade mark application or registration can also be divided so that goods and services included in the original Community trade mark are divided up into one or more divisional Community trade marks. However, a division is not possible in certain situations. For example, in pending opposition or cancellation proceedings it is not possible to divide off those goodfs and services that are subject to the opposition or cancellation. Division of a Community trade mark is also not possible before a filing date has been accorded and during three months following the publication of the application, i.e. during the opposition period.

7.7 Surrender

[Art. 49, Rule 36]
The proprietor of a Community trade mark may surrender the Community trade mark in respect of some or all goods or services. The declaration of surrender must be filed with the OHIM in writing by the proprietor of the trade mark. It is effective from the date of entry into the Register.

However, there are certain limitations for entering the surrender in the Register. If a proprietor of a right, such as a right in rem has been entered in the Register, surrender is only possible with his consent. Furthermore, if a license has been registered, the proprietor of the Community trade mark must prove that he has informed the licensee of his intention to surrender.

7.8 Revocation

[Art.50, Rule 37-41]
The following may be grounds for the revocation of a Community trade mark:

• After the expiry of the so-called grace period of five years after registration, the Community trade mark has not been put to genuine use in the EU for the registered goods or services within a continuous period of five years and there are no proper reasons for this non-use.
• The Community trade mark has become the common name in the trade for a product or service for which it is registered as a consequence of an activity or inactivity of the proprietor.
• The Community trade mark is suitable to mislead the public in particular regarding the nature, quality or geographical origin of its goods or services, because of the use by the proprietor of with the proprietor's consent.
• The proprietor of the Community trade mark no longer fulfills the requirements of proprietorship, for example the proprietor is no longer a national or resident of a relevant state.

If one of the above grounds for revocation is given, the Community trade mark may be revoked for all or for part of the goods and services for which it is registered, either on application to the OHIM or on the basis of a counterclaim in infringement proceedings.

[Art. 55]
Any natural or legal person and any group or body representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the governing law has the capacity to sue and be sued in its own name is entitled to file an application for revocation with the Office.

7.9 Invalidity

[Art. 51-56, Rule 37-41]
A registered Community trade mark may be declared invalid for all or for part of the registered goods and services either on application to the OHIM or on the basis of a counterclaim in infringement proceedings.

[Art. 55]
An application for declaration of invalidity on absolute grounds may be filed by any natural person or representative of manufacturers, producers etc. In case the application is based on relative grounds, the application may be filed by the proprietor of the earlier rights.

The following absolute and relative grounds may be invoked to justify the invalidity of a Community trade mark registration:

Absolute grounds for invalidity are:

• the registration of the Community trade mark although the proprietor did not fulfil the requirements of proprietorship, for example the proprietor was not a national or resident of a relevant state,
• the registration of the Community trade mark although there were absolute grounds for refusal (cf.Art.7), or
• a bad faith action of the applicant when filing the application.

7.10 Conversion into National Applications

[Art. 108, Rule 44-47]
The proprietor of a Community trade mark application or registration may convert the Community trade mark into national applications. The main purpose of converting a Community trade mark into national applications is to maintain the date of filing or the priority/seniority date. This can be done when a Community trade mark registration has been withdrawn, is deemed to have been withdrawn, has been refused or ceases to have effect e.g. as a consequence of one of the following events:

• The Community trade mark application is rejected on absolute grounds, bu7t the grounds for rejection are not applicable in all Member States of the EU.
• The Community trade mark application is rejected on relative grounds in view of an opposition, but the opposing trade mark is only registered in one or some of the EU Member States. In such a case, the Community trade mark may be registered as a national trade mark in the remaining Member States.
• The Community trade mark expires due to failure to renew the registration.
• The effect of a registered Community trade mark is lost following surrender, revocation or invalidity.

To preserve the priority date an application for conversion must be filed at the Office within a 3 months' deadline. The conditions for this deadline are specified in detail in Article 108 of the Community trade mark Council Regulation EC 40/94.

The request for conversion must be filed with the Office and must specify the Member States for which conversion is desired. The request is not considered to have been filed until the conversion fee has been paid. The request for conversion is transmitted by the OHIM to the national trade mark office, which then decides on the admissibility of the request.

Conversion into national applications will not be possible if:

• the Community trade mark has been revo9ked in view of non-use, unless the Community trade mark has been put to use in the Member State for which conversion is requested, or
• the original grounds for refusal, revocation or invalidity of registration apply in the particular Member State for which the conversion is requested.

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