What is the procedure for obtaining a Community Trade Mark Registration?

A Community trade mark (CTM) registration is a single registration which provides trade mark rights in all twenty-five European Union (EU) member states. Accordingly, the CTM system provides a relatively inexpensive means of securing trade mark protection throughout the European Community.

In order to obtain a CTM registration, it is necessary to make an application, either directly to the Community Trade Mark Office (OHIM) or via a national trade mark office of an EU member state, who will forward it to OHIM. There are no longer any nationality restrictions over whom may apply for or own a CTM registration.

An application should include information about the applicant, a representation of the mark and a list of the goods/services for which registration is sought. An official fee must also be paid and the filing costs will vary depending upon how many classes the applicant’s goods/services fall within. The application can be made in any one of the EU official languages. The applicant should also nominate a second language which should be one of the five official languages of OHIM: English, French, German, Spanish and Italian.

After filing, OHIM will consider whether an application meets formal filing requirements, including requirements relating to the classification of goods/services. Once any objections relating to classification have been resolved, OHIM will carry out substantive examination to assess whether the sign for which protection is sought is a trade mark and, if so, whether it is the type of mark that is registerable (examination on absolute grounds). If any objections are raised, there is an opportunity to respond to the objections.

OHIM and the national offices of most EU member states carry out searches for conflicting earlier trade mark applications/registrations. Details of the searches are sent to the applicant for information purposes. However, OHIM has no power to refuse an application on the basis of any earlier conflicting applications/registrations (i.e. there is no examination on relative grounds).

If an application is accepted, details of the application will be published in the Community Trade Marks Bulletin and third parties will have three months from the publication date to oppose the application. An opposition can only be filed on the basis of relative grounds and must be filed by the owner (or in some circumstances a licensee) of the earlier rights upon which it is based. The opposition can be filed in any one of the two languages of the opposed application which is also an official language of OHIM.

If no opposition(s) are filed (or the application is not successfully opposed in its entirety), then the application will proceed to grant and a certificate of registration will be issued once a registration fee has been paid. A CTM registration lasts initially for ten years from the filing date. However, provided that renewal fees are paid every ten years, the duration of the registration may be extended indefinitely.

As a Community trade mark is a unitary right, if grounds for refusing a CTM application exist in respect of one or more member state, the application will be rejected as a whole. In these circumstances, it is possible to convert a CTM application into national applications, retaining the filing date of the CTM application, in those member states where grounds for refusal do not exist.