Businesses operating in an EU or international market require EU-wide protection of their intellectual property rights (IPR).
To address this requirement, the EU has made provision for:
(i) the harmonization of the national trademark laws of the Member States; and
(ii) the creation of a Community Trade Mark (CTM) and registration procedure.
A trademark may be registered with the Office of Harmonization in the Internal Market (EU trademark office) in Alicante, Spain and this registration will grant protection in all Member States. This system exists alongside national trademark registrations and provides an alternative to national registrations.
A CTM is valid for 10 years from the date of filing and is renewable for additional 10-year periods.
CTMs may be assigned or licensed. Licences and agreements affecting title to a CTM must be recorded with the Alicante Office to be effective against third parties.
A CTM must within a period of 5 years following the date of completion of the registration procedure be put to genuine use in at least 1 Member State, by the owner or with his consent, in relation to the goods or services for which it is registered, as otherwise it may be revoked.
Advantages of the CTM
Advantages, to date, of registering a CTM include:
- a single registration grants protection over all 25 Member States thus allowing businesses to better manage their portfolio of IPR;
- a trademark owner who holds an earlier national registration may claim the seniority of the national registrations when applying for a CTM with identical goods or services covered by the national registration;
- if a CTM application is unsuccessful , a CTM applicant may within 3 months of the decision, request the Alicante Office to convert the community trademark application to individual national applications whilst retaining the priority of the community trademark application;
- a 6-month priority may be claimed by an applicant based on their first application filed in a member country of the Paris Convention or the World Trade Organization Agreement; and
- the CTM makes use of the official International Classification of Goods and makes provision for multi-class applications.