The Community Trade Mark
4. Registration Procedure :
Community trade marks can only be obtained by registration in the Community trade mark Register, handled by the OHIM. In contrast to e.g. German trade mark law, a Community trade mark may not be acquired through the mere prestigiousness or the notorious publicity of a trade mark in the market.
The registration procedure has three stages:
* Filing of an application and subsequent examination of formalities and absolute grounds for refusal,
* publication of the application and possible opposition proceedings, and
* registration and publication thereof.
4.1 Application
4.1.1 Filing the Application
[Art.25]
The application for a Community trade mark can be filed:
* either directly at the OHIM in Alicante, or
* at the national patent and trade mark offices of the European Community Member States, including the Benelux Trade Mark Office.
An application filed at one of the national offices shall have the same effect as if it had been filed on the same date at the OHIM. If the application was filed at a national office, the national office forwards the application to the OHIM within two weeks after filing and may charge the applicant a fee for receiving and forwarding the application. If the application does not reach the OHIM within two months after filing, it receives the filing date on which the application did finally reach the OHIM.
[Rule 79-83]
The application may be filed either online, by telefax or regular mail or personally at the OHIM. The facsimile signature on a telefax is equivalent to an original signature. Furthermore, the use of the official form of the OHIM is not obligatory, but strongly recommended.
4.1.2 Requirements for the Application
[Art.26, Rule 1]
It is absolutely necessary that the application for a Community trade mark contains certain particulars. The following are the most important:
* a request for the registration of a Community trade mark,
* information identifying the applicant,
* a list of goods and/or services,
* a representation of the trade mark.
[Rule 4]
The application fee is due within one month after filing the respective documents at the OHIM or the national offices. Where the classes of goods and services exceed three, additional class fees fall due. The application will only be accorded an application date if these requirements are fulfilled. If a requirement for filing is not fulfilled, the OHIM will issue an invitation to comply with the missing requirements within a period of 2 months and the filing date will become the date on which the last requirement is completed.
4.1.3 Appointed Representative
[Art.88, Rule 75-78]
If the applicant is a legal or natural person with a domicile, principal place of business or industrial/commercial establishment in the EU, there is no obligation to appoint a representative before the OHIM. Nevertheless, it is often advisable to use the services of a specialised professional representative. This helps to avoid difficulties arising from insufficient knowledge of trade mark law, procedural rules and time limits.
4.1.4 Representation of the Community Trade Mark
[Rule 3]
If no special graphical feature or colour is claimed the Community trade mark can be typed in normal script as letters, numerals or signs in the application. Otherwise, the mark must be reproduced on a separate piece of paper no larger than DIN A4. Three dimensional marks should consist of a photographic or graphic representation of the mark, which may, and preferably should, contain up to six different perspectives of the mark. An indication of an international recognized colour code is optional, however recommended by the OHIM for trade marks consisting of a colour per se. For a sound mark filed online, electronic sound files can be attached to the application.
4.1.5 Priority
[Art.29-33, Rule 6]
Within 6 months from the date of filing of a national application in a state party to the Paris Convention, it is possible to file a Community trade mark application claiming the priority date of the first application. The right of priority has the effect that the date of priority counts as the date of filing of the Community trade mark application for the purposes of establishing which rights take precedence. The effects of priority are valid for the whole territory of the EU.
The priority must be claimed either:
* when filing the application for the Community trade mark, or
* within two months after the application date of the Community trade mark application.
For claiming priority it is necessary to file a priority declaration indicating the application date and the country of the previous application. Within a period of three months after claiming priority, the official number of the previous application must be indicated and a copy of the previous application must be filed. The copy does not have to be certified. It is also sufficient to submit a printout of an official database. However, printouts of private or commercial databases are not sufficient.
Priority can only be claimed if the trade marks are identical and the goods and services are identical as far as priority shall be claimed. If the list of goods and services for the Community trade mark is broader than the list of goods and services of the trade mark of which priority shall be claimed, it is possible to claim partial priority for those goods and services that overlap in the list of goods and services of both trade marks.
[Art.30]
If the previous application was not in a language of the OHIM, the OHIM will request the applicant to file a translation of the application in one of the languages of the OHIM within a time period of three months.
4.1.6 Seniority
[Art.34,35,Rule 8]
The Council Regulation also provides the possibility of claiming the seniority of a national trade mark. The effect of seniority is that once the Community trade mark is registered, it is possible to allow the earlier national trade mark to lapse due to non-payment of the renewal fees. The rights in the earlier registration will continue to be effective through the Community trade mark due to the seniority claim. It is, however, important to note that the effects of seniority are only valid for the territory of the Member State where the national trade mark was filed. Seniority does not extend to whole territory of the EU.
The prerequisites for a valid seniority claim are:
* a national trade mark registration,
* the identity of the proprietor of the Community trade mark and the proprietor of the national trade mark,
* identical signs, and
* identical goods and services as far as seniority shall be claimed.
The last three prerequisites are referred to as "triple identity".
Seniority can be claimed either right at the time of the application of the Community trade mark, within two months thereafter or after the registration of the Community trade mark.
If senior is claimed either at the time of the application of the Community trade mark or within two months thereafter, the above mentioned prerequisites must be fulfilled at the date of the application of the Community trade mark. It is not sufficient that the prerequisites are fulfilled within two months after the application even if seniority is only claimed at the date where all prerequisites are fulfilled for the first time. However, changes that occur prior to or after the date of application of the Community trade mark do not affect the seniority once seniority has been claimed correctly. If seniority is claimed after the registration of the Community trade mark, the prerequisites must be fulfilled at the time of the seniority claim.
Seniority can only be claimed from a prior trade mark that is registered:
* in an EU Member State,
* in the Benelux Trade Mark Office, or
* as an international registration having effect in a Member State of the EU.
It should be noted that seniority cannot be claimed from an earlier Community trade mark for a new Community trade mark application.It is further necessary that the prior trade mark is registered. Aaccordingly, seniority cannot be claimed from a national trade mark that has been acquired by mere use under the law of the respective Member State. Also, it is disputed, however practice of the OHIM, that the trade mark has to be registered at the date of the application of the Community trade mark. It is not considered sufficient if the national trade mark is registered within two months after the application of the Community trade mark even if seniority is only claimed at the date. In that case, seniority can only be claimed after registration of the Community trade mark.
It should also be noted that, as personal identity between the proprietor of the Community trade mark and the proprietor of the national trade mark is required, affiliations between companies are not sufficient for claiming seniority. However, the mere change of the name of the proprietor of the national trade mark does not contravene this requirement of personal identity as long as the identity of the proprietor as legal person has remained the same. Also, changes in ownership of the Community trade mark or the national trade mark are irrelevant if these occur after the date of application of the Community trade mark or, if seniority is claimed after registration of the Community trade mark, after the claim of seniority.
Like with priority, partial seniority can be claimed for those goods and services that overlap in the list of goods and services of both trade marks.
If seniority shall be claimed it is necessary to submit a copy of the relevant registration within three months after the application of the Community trade mark or within two months after the claim of seniority. The copy does not have to be certified. It is also sufficient to submit a printout of an official database. However, printouts of private or cofmmercial databases are not sufficient.
Seniority ends if the earlier trade mark is declared to have been revoked or to be invalid or if it is surrendered prior to the registration of the Community trade mark or if the required triple identity is no longer given at any point of time, for example because the Community trade mark has been transferred without the national trade mark of which seniority is claimed.
Contrary thereto it is possible, however not advisable, to let the national trade mark lapse due to non-renewal before the registration of the Community trade mark. In this case, the proprietor risks a loss of rights if the national trade mark is allowed to lapse and the Community trade mark is then not registered, for example due to opposition proceedings initiated by third parties.
4.1.7 Languages
[Rule 95-99]
For Community trade marks, the term official languages of the EU has to be differentiated from the languages of the Office. This difference is for example important for the application of a Community trade mark.
The 22 official languages of the EU are Bulgarian, Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Italian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Rumanian, Swedish, Slovak, Slovene and Spanish.
The 5 languages of the Office are English, French, German, Italian and Spanish.
Applications for Community trade marks must be filed in one of the official languages of the EU. This language will be considered to be the first language of the Community trade mark. However, the applicant must indicate a second language of the Community trade mark that must be one of the languages of the Office, which he accepts as a possible language for opposition, revocation or invalidity proceedings.
If the application is filed in a language other than a language of the Office, the OHIM will arrange for the application to be translated into the second language as indicated by the applicant. If the applicant is the sole party of the proceedings before the OHIM, the language of proceedings shall be the language used for filing the application. The OHIM may, however, send written communications to the applicant in the second language as indicated by the applicant.
Notification of oppositions and applications for revocation or invalidity must be filed in one of the two languages indicated in the application provided that this is a language of the Office.
4.2 Examination and Search
4.2.1 Examination of Formalities
[Art.36, Ar. 27, Rule 9]
At first, the OHIM examines whether the application is in accordance with the conditions set out in Art.26. If the application is incomplete, the applicant will be given the opportunity to remedy any deficiencies within a prescribed time period. After compliance with this request, the date on which the deficiencies are remedied is recorded as the filing date of the application. The OHIM also examines whether the application complies with the conditions set forth in the CTMIR. If any of these deficiencies are not remedied within the prescribed time period, the OHIM will refuse the application.
4.2.2 Examination of Absolute Grounds for Refusal
[Art. 7]
A sign may not be registered if the OHIM finds that absolute grounds for refusal apply. Thus, the following shall not be registered:
1. Signs which do not fulfil the requirements set forth in Art.4 of the CTMR, according to which a Community trade mark may consist of 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 undertaking from those of other undertakings.
2. Trade marks which are devoid of any distinctive character, unless the sign has become distinctive in relation to the goods or services as a consequence of its common use.
3. Trade marks which consist exclusively of descriptive signs or indications which may serve in trade to designate the:
* kind,
* quality,
* quantity,
* intended purpose,
* value,
* geographical origin,
* the time of production, or
* other characteristics of the goods or services
unless the sign has become distinctive as a consequence of its use on the market.
4. Signs which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade, unless the trade mark has become distinctive due to its common use.
5. Trade marks which consist exclusively of the shape which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result or gives substantial value to the goods.
6. Trade marks which are contrary to public policy or to accepted principles of morality.
7. Trade marks that deceive the public, for instance as to the nature, quality or geographical origin of the goods or services.
8. Trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Art.6ter of the Paris Convention.
9. Trade marks which include badges, emblems or escutcheons other than those covered by Art.6ter of the Paris Convention and which are of particular public interest, unless consent to their registration has been given by the appropriate authorities.
10.Trade marks of wines, where the trade mark corresponds to the geographic origin of the wine.
11.Trade marks, which contain or consist of a designation of origin or a geographical indication and have been registered in accordance with Regulation EEC 2081/92, in so far as they correspond to one of the situations covered by Article 13 of the Said Regulation.
The above-mentioned grounds for non-registrability are applicable even if they are only given in part of the European Union.
[Art.38, Rule 11]
The OHIM examines whether there are absolute grounds of refusal of a Community trade mark as stated above, in particularly such as mere descriptiveness or the lack of any distinctive character of the trade mark. If the trade mark is not registrable according to the CTMR in respect of some or all of the goods or services, the application will be partially or completely rejected.
If the trade mark contains an element which is not distinctive, the OHIM may request a disclaimer, according to which the applicant states that he disclaims any exclusive rights to the non-distinctive element.
Before rejection of the application, the applicant must be given the opportunity to withdraw or amend the application or to submit his arguments in favour of the application. Oral proceedings shall be held either at the request of the applicant or of the OHIM.
4.2.3 Search
[Art. 39]
The OHIM does not undertake searches on individual request. However, once a Community trade mark application has received a filing date, the OHIM establishes a Community Search Report with respect to earlier Community trade mark applications and registrations. These earlier Community trade marks for identical or similar goods and services are cited in the search report and may be invoked against the application.
In addition, the national offices of European Union Member States (incl. the Benelux Trade mark Office) have the possibility to conduct searches in their own registers and forward these to the OHIM within 2 months after reception of the application. Most countries in the EU have decided to conduct national searches, with the notable exceptions of Germany, Italy, France, Cyprus, Estonia, Latvia, Malta and Slovenia. Furthermore, Lithuania has temporarily suspended its participation. These search reports are forwarded to the applicant of the Community trade mark by the OHIM. The applicant can then decide whether to withdraw the application in view of the search reports or whether to proceed with the application. However, unlike some national offices, the OHIM will not refuse an application on its own initiative based on the results of the search reports.
In the light of the missing national search reports of the above-mentioned countries, it is good practice to conduct a private search in these countries prior to filing a Community trade mark application. Also, effective from March 10, 2008, national searches conducted after the application of a Community trade mark will be optional and subject to an additional fee.
4.2.4 Publication of the Application
[Art. 40, Rule 12]
If the application is maintained by the applicant after transmission of the Search Report, it will be published in part A of the Community Trade Mark Bulletin, but not before a period of one month after the date on which the OHIM transmits the search report to the applicant.
Upon publication of the Community trade mark application, the OHIM notifies the proprietors of earlier Community trade mark applications or registrations cited in the Community Search Report of the publication of the Community trade mark application. The proprietors of these earlier Community trade marks as well as proprietors of other earlier rights will then have the option to oppose the younger Community trade mark application.
4.2.5 Observations by Third Parties
[Art. 41]
Following publication of the Community trade mark application, any natural or legal person may submit written observations to the OHIM, explaining which absolute grounds for refusal oppose registration of the trade mark ex offricio. However, these individuals or groups are not parties to the proceedings before the OHIM. The observations are communicated to the applicant, who can then comment on them vis-a-vis the OHIM.
4.3 Opposition
[Art.42, Rule 15-22]
Within a period of three months following the publication of a Community trade mark application, proprietors of earlier rights have the possibility to file an opposition against the Community trade mark application based on relative grounds of refusal.
The written opposition must give particulars concerning the opposed trade mark as well as the earlier rights on which the opposition is based. Furthermore, the opposition must also specify the grounds on which it is made. The opposition fee must be paid within the opposition period, otherwise the opposition is deemed to have not been filed.
Table 2: Statistics on the Community trade mark oppositions filed.
Year No. Oppositions
1997 851
1998 11.059
1999 10.609
2000 11.500
2001 12.879
2002 9.802
2003 9.939
2004 10.721
2005 17.373
2006 14.109
2007 (until April) 3.993
---------------------------------------------------------
1996-2007 112.835
--------------------------------------------------------
4.3.1 Grounds for opposition
[Art. 8]
An opposition may be based on relative grounds for refusal, i.e. on earlier rights existing for the same or a similar sign as applied for.
The following earlier rights may be relied upon in for an opposition:
* Community trade marks,
* national trade marks or Benelux trade marks,
* international trade marks with protection in one of the Member States of the European Union,
* trade marks which are well-known in the sense of Art.6bis of the Paris Convention at the date of application of the Community trade mark's application or the priority claimed, or
* non-registered trade marks or other signs used in the course of trade of more than mere local significance, provided that purusant to the law of the Member States governing that sign:
- rights to that sign were acquired prior to the date of application or the claimed priority date of the Community trade mark, and
- that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
An opposition may also be based on an earlier trade mark application provided that the earlier trade mark application is registered later on. If the earlier trade mark application is not registered, the opposition will become inadmissible.
The Community trade mark application will be rejected in view of the opposition, if:
* the earlier trade mark is identical to the Community trade mark application and the goods/services of both trade marks are identical,
* the earlier trade mark is identical or similar to the Community trade mark application and the goods/services of both trade marks are identical or similar and there exists a likelihood of confusion in the territory in which the earlier trade mark is protected,
* an agent or representative of the proprietor of a trade mark applies for registration thereof in his own name without the proprietor's consent, or
* the Community trade mark application is identical or similar to an earlier trade mark and is to be registered for non-similar goods or services if the earlier trade mark has a reputation in the EU or, in the case of an earlier national trade mark, the national trade mark has a reputation in the Member State concerned and where the use of the Community trade mark would take unfair advantage of or be deterimental to the distinctive character or the reputation of the earlier trade mark.
4.3.2 Opposition Proceedings
[Rules 16-19]
After an opposition has been filed, the OHIM will notify the applicant that the Community trade mark application has been opposed and that the admissibility of the opposition will be checked by the OHIM.
When the opposition is found admissible, the OHIM will send a communication to the parties informing them that the opposition proceedings shall be deemed to commence two months after receipt of the communication. This two-months period is called "cooling off period". The purpose of the cooling off period is to allow the parties to negotiate for a friendly settlement in order to solve their conflict without formal proceedings. The initial time limit of the cooling off period is two months, but it may be extended up to a total of 24 months if both parties submit requests for such an extension before the period expires. Whereas the cooling off period used to be extended by two-months intervals, the OHIM now extends the cooling off period to the maximum of 24 months with the first request for extension of this time limit without the necessity of repeated requests.
If one of the parties wishes to continue with the opposition proceedings, it can notify the OHIM by an irrevocable declaration that it wishes to opt out of the cooling off period. The OHIM will confirm this request and the adversarial part of the proceedings will commence two weeks after receipt of this notification.
If the application is withdrawn or restricted during the cooling off period, i.e. before commencement of the adversarial part of the opposition proceedings and if the limitation has led to the conclusion of the opposition proceedings, the opposition fee will be refunded.
[Art. 43, Rule 19]
If the parties cannot solve their conflict before the end of the cooling off period, the adversarial part of the opposition proceedings commence. As often as necessary, the OHIM willo invite the parties to file observations. Firstly, the opposing party will be invited to present further facts, arguments and evidence in order to support the opposition. In particular, the opposing party shall submit proof of existence, validity and scope of protection of the earlier trade mark or earlier right as well as proof of entitlement to file the opposition. The OHIM will then communicate the submission of the opposing party to the applicant and shall invite him to file a reply to this submission within a certain period of time to be set by the OHIM, usually two months. All submissions and evidence must be filed in the language of the proceedings or be accompanied by a translation that shall be filed in the time limits applicable for filing the originals. The OHIM will not take into account all submissions or documents or parts thereof that have not been submitted or been translated into the language of the proceedings within the applicable time limit.
[Art. 74]
When considering relative grounds for refusal, the OHIM is restricted to examine only those facts provided by the parties themselves within the applicable time limits.
[Art. 43, Rule 22]
In the opposition proceedings, the applicant can request the opposing party to provide proof that the earlier trade mark was put to genuine use in the EU during a period of five years preceding the publication of the new Community trade mark application. However, if the applicant wishes to request such proof from the opponent, the applicant must do so within the first time limit set for the applicant by the OHIM for submitting a reply to the opposition. Where proof of use cannot be submitted, the OHIM will not take into consideration those goods and services where proof of use was requested.
[Art. 75]
Oral proceedings are held either at the request of the OHIM or the parties to the proceedings. However, in practise, oral proceedings are rarely held.
If the examination of the opposition is successful for some or all of the goods or services for which the Community trade mark application was filed, the registration of the younger Community trade mark application will be refused for these goods or services. Otherwise, the opposition will be rejected and the decision to refuse the opposition will not be published.
[Art. 81]
The loosing party has to bear the costs of the proceedings that are determined in the Commission Retgulation (EC) No. 2869/95 of 13 December 1995 on the fees payable to the OHIM. However, these are limited to maximum rates of current 300 EUR for the attorney's costs of the winning party. Where each party succeeds and fails to some extend, the OHIM shall decide a different apportionment of costs.
4.4 Appeal
[Art. 57-63, Rule 48-51]
Any final decision of an OHIM body is subject to appearl by a party that has been adversely affected by the decision. These bodies are:
* Examining Divisions,
* Opposition Divisions,
* Administration of Trade Marks and Legal Division, and
* Cancellation Divisions.
Accordingly, decisions of an Examining Division to reject a trade mark application on absolute grounds may be appealed as well as decision of an Opposition Division.
The appeal must be filed in the language of the disputed decision, within a time period of two months after notification of said decision. The appeal fee must be paid within the same time limit. Arguments in support of the appeal are to be filed within four months after notification of the disputed decision. These time periods are not extendable.
After first examining the allowability of the appeal, the Board of Appeal decides on its outcome. These decisions are published in the Official Journal of the OHIM and made available on the OHIM's internet.
Oral proceedings may be granted if the Board considers these useful.
[Art. 63]
It is possible to bring an action before the European Court of Justice against decisions of the Boards of Appeal. Grounds for such an action are:
* lack of competence,
* infringement of an essential procedural requirement,
* infringement of the Treaty,
* infringement of the Council Regulation,
* infringement of any rule relating to the application of the Treaty or Regulation, or
* misuse of power.
The action must be brought before the Court of First Instance or ultimately before the European Court of Justice within two months of the date of notification of the decision of theBoard of Appeal.
4.5 Registration of a Community Trade Mark
If
* the Community trade mark application has been found to meet the requirements of the Council Regulation,
* no opposition has been filed or an opposition has been rejected, and
* the registration fees have been paid on time (extendable 2 months' deadline)
the Community trade mark application is entered into the Register. The registration is subsequently published in the Community trade mark Bulletin (Part B). After publication of the registration, the proprietor of the Community trade mark can invoke the rights conferred by his trade mark vis-a-vis third parties, for example in infringement proceedings.
[Art. 45, Rule 23]
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