There are two concurrent trademark systems in Europe, one is the European Community trademark system (“Community trademark”) and the other is the national trademark system of each EU member state (“national trademark”). The two trademark systems have different coverage and application requirements; therefore, a company seeking to protect its trademarks in Europe should consider the advantages and disadvantages of each of the system in order to make the most appropriate and cost-efficient trademark strategy.
A Community trademark is registered in the EU as a whole and thus the trademark protection covers all EU member states.
Application for a Community trademark shall be filed with the Office for Harmonization in the Internal Market (“OHIM”) located in Spain. Upon receipt of an application, the OHIM will examine whether there exists any “absolute ground” for rejecting the application, such as the descriptive character or the lack of distinctiveness etc. In case any of such grounds exists, the OHIM will notify the applicant to present its defending arguments and determine on whether the application shall be rejected. However, the OHIM does not examine whether the applied trademark is identical or similar to any existing registered trademarks unless any third party opposition is filed
Meanwhile, database search for similar or identical registered national or Community trademarks will be conducted, respectively by the competent trademark registration authority of each EU member state and the OHIM. The OHIM will combine the results of said trademark search together in a search report and provide the same to the applicant. The search report serves as guidance to the applicant to evaluate whether any serious opposition could be raised against its application. If evaluation shows that the application would probably not survive oppositions, within one month upon OHIM's delivery of the research report, the applicant may consider amending the scope of application or converting the Community trademark application into national trademark application for individual EU member states (reserving the previous application date). After the expiry of the aforesaid one-month period, the application will be published in the official Gazette for third party opposition.
There is a three-month period for owners or their authorized licensees of Community trademarks or national trademarks of any EU member state to file opposition against the application. After this period, cancellation procedure can be initiated under certain circumstances. As the Community trademark can only exist as a whole in all EU member states, a successful opposition based on a conflicting prior trademark right in one single EU member state will cause the entire Community trademark application being rejected.
If no opposition has been filed during the three-month period or if all oppositions have been finally dismissed, the OHIM will grant the applied trademark registration after the applicant's payment of the official registration fee. In addition, the registration will also be published in the official Gazette and a Trademark Certificate will be issued.
The Community trademark is valid and enforceable in each member state for 10 years, which period can be extended upon expiration.
National (German) Trademark
Beside the Community trademark system, each EU member state has its own national trademark system. Relevant application and registration procedure are regulated by national laws and differ from country to country.
The procedure for registration of German trademarks is similar to that of Community trademarks. The opposition period is three months and opposition can be filed either based on existing German trademarks or Community trademarks. A registered German trademark is effective and enforceable in Germany for 10 years starting from the application date, with extension possibility.
Relations between Community Trademark and National Trademarks
Community trademarks and national trademarks exist independently and concurrently. That is to say, a company can register a trademark respectively in each of the (currently) 25 EU member states and at the same time register this mark as a Community trademark which is effective in all of the 25 EU member states. The validity of a national trademark will not affect the validity of its corresponding Community trademark, and vice versa.
In case of cancellation claims, the above-said co-existing character of these two systems may lead to a situation that the cancellation of the national trademark has in fact no effect. For example, if a company registers its logo both as a Community trademark and a German trademark, then even if the German trademark is cancelled, the trademark protection “gap” in Germany would be filled up by the Community trademark; identically, if the Community trademark is cancelled, the trademark protection still exists in Germany. Such overlap protection can be considered in the key areas of business operation to strengthen the protection of important trademarks. A recent case relating to cancellation of FIFA's “WM 2006” trademark, summarized in our NEWS , is an example of the over-lap protection strategy.
In the opposition procedure, the Community trademark system and the national trademark system are related to each other. As stated above, an opposition against a Community trademark application can be filed based on a prior registered trademark in any of the EU member state. Identically, an opposition against a national trademark application can be filed based on a prior Community trademark. Thus, in view of preventing a specific mark or its similar marks being registered by third parties, it is advisable to register this mark as a Community trademark.
Cost and Duration of Application
The official fees for community trademark application have been reduced in 2005. The basic official fee for an application covering up to 3 classes of goods / services is 900 € (750 € in case of e-filing). The official fee for registration is 850 €.
Attorney fees for Community trademark applications vary from different law firms. Normally, the charge for filing an application ranges form 500 € to 1000 € and the charge for handling registration ranges from 250 € to 600 €.
A Community trademark registration usually takes about 10 to 15 months, depending on relevant opposition procedure.
Cost and duration for national trademark applications vary from country to country.
In Germany, the official fee for trademark application is 300 €, and there is no additional registration fee. The attorney fee ranges from 500 € to 800 €. A trademark registration in Germany usually takes about 8 to 12 months, which period can be shortened to 3 to 4 months by paying an extra official fee of 200 €.
Pros and Cons of the Community Trademark
Trademark protection covering (currently) 25 EU member states with one single application.
Cost-saving and cost-efficient (in comparison to individual national trademark applications) if trademark protection in more than 3 EU member states is desired.
Higher risk of being defeated by third party opposition (in comparison to national trademark applications).
The registration of a Community trademark usually takes longer than registration of a national trademark. This disadvantage can be eliminated by claiming priority right; however, this applies only to first registration in certain countries.
It is advisable to take all these pros and cons into consideration to decide on the best trademark strategy. In key areas of business operation, overlap protection by both Community and national trademark registration can be considered to reduce the risk of cancellation claims.
Lee & Schwerbrock handles German and Community trademark applications. We cooperate with experienced trademark attorneys in other countries worldwide as well.