Community Trademarks

THE COMMUNITY TRADEMARK TREATY – CTM – FOR TRADEMARKS & DESIGNS:

Introduction:

The CTM was established in 1996 by way of the ‘Office For Harmonisation In The Internal Market’ (OHIM)  with the aim of harmonizing of Intellectual Property Rights pertaining to Trademarks & Designs amongst the European Countries which are signatory to the European Union.

Initially CTM comprised of only 15 nations and then expanded to include several other European countries.  Kindly refer the list for current members.

Earlier applicants wishing to register their trademarks  and designs in Europe had to do so through individual filings at the National Offices of the countries of choice. With CTM it is now  possible to obtain registration of trademarks through a single route by way of a single application which covers many European countries as well as subsequent member countries as and when they join the CTM platform.

MEMBER STATES : Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherland,  Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom

Aspects of CTM:

·    Simplicity along with Lower Costs towards registration of trademarks and designs in the European Union.

·    Uniform Law by way of CTM throughout European Union.

·    Automatic protection in the subsequent member countries joining the European Union.

·    Uniform registration period of 10 yrs. Throughout the European Union.

·    Options in filing the applications either:

(i)  Directly with the OHIM office based at Alicante, Spain

(ii)  National Offices of the signatory countries

(ii)  Benelux office based at Hague, Netherlands

·    Options in filing the applications in any of the 22 languages prevalent in the European Union.  The language chosen therein will be deemed as the 1st language.

·    The applicant then has to indicate a 2nd language on the application at the time of filing out of the five languages which are English, French, German, Italian and Spanish.  The indicated 2nd language will apply to all matters and proceedings pertaining to oppositions, cancellations along with administrative purposes.

Applicants:

Unlike with the Madrid System, a non-domiciled, non-european national as well as a legal entity can file applications under the CTM regimen.

Search and Filing:
·    OHIM conducts and provides search service at National Offices for prior registered CTM for a fee.

·    Applicants need not provide Power Of Attorney at the time of filing of the application or during the prosecution of the application by OHIM.  POA is to be supplied only when demanded expressly by OHIM or third parties to the proceedings.

·    Our authorised and professional representatives on the OHIM’s list will assist you with search, filing and prosecution of the trademarks and designs application under the CTM regimen.

Requirements for Marks to Be Registrable under CTM:

·    Marks should be distinctive.

·    Marks should not be identical and / or similar to prior registered marks and marks pending registration.

·    Marks should not contain official insignia of member countries.

·    Marks must be registrable regarding absolute and relative aspects in all the member countries of the European Union.

Conversion of Application:

·    If the application encounters rejection in any one of the European Union member countries it cannot be considered for registration under the CTM regimen.

·    Nonetheless, the application can be converted into individual national applications with the countries of choice and pursued therein accordingly in some cases.

Benefits of the CTM Regimen:

·    Single application for filing and registration of trademarks covering European Member Countries.

·    Significantly low costs in comparison to individual national filing and registration.

·    Automatic coverage given to new member countries joining the CTM.

·    Reasonable, Valid and Continuous usage for 5 yrs. In any of the CTM member countries is sufficient to maintain validity of the trademark in the entire European Union.

·    Reasonably quick registration time provided no negative situation encountered by the application in comparison to individual national filing.

·    Retention of priority date even after conversion of the CTM application into a National Application with the country of choice.

Drawbacks of the CTM Regimen:

·    During the process of registration of trademark under the CTM regimen, if a prior registered mark similar and / or identical to the proposed trademark is found, even in one member country, this aspect is enough to defeat the entire CTM registration process.

·    In the event the application encounters several oppositions and objections, costs could escalate.

Conclusion:

The many advantages of CTM have popularized this regime amongst prospective applicants wishing to register their trademarks and designs in the European Union with relatively low costs, simpler and quicker registration time and ease of maintaining the marks.