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Trademark Protection in Europe
Trademark Protection in Europe – Brief Introduction
Community Trademark The Community Trademark Regulation provides coverage throughout the European Union on the basis of a single trademark application. As opposed to the Madrid Convention there are no restrictions on the applicant; he may be an EU national or non-national. A trademark right is obtained for all EU countries, while use in only part of the EU is required to maintain the right. Since January 1, 2007 the European Union Member states covered include: Austria
Madrid Agreement The Madrid Agreement provides an International registration system which is widely accepted in its contracting states for being simple, cheap and efficient, though some important industrial countries such as the United States, Japan, the United Kingdom, Canada and Australia never signed it. The applicant must be a national or legal entity of a Member State and the applicant must be preceded by a national registration in the home country of the applicant. The central application, which has to be filed with the home country´s national office, results in a bundle of national trademark rights bearing one single serial number.
Madrid Protocol The Madrid Protocol represents an amendment to the Madrid Agreement, which should make the Agreement more attractive to non-member countries. Application is still restricted to nationals or legal entities of a Member State, and in addition, the application must be based on a national application in the home country of the applicant. Applicant, however, can select the particular countries to be covered. As under the Madrid Agreement, the application results in a bundle of national trademark rights, whereby use in each country is required to maintain the right in that country. As meanwhile the EU is member to the Madrid Protocol, a Community Trademark can be obtained through an International Trademark application (“incoming PIR Mark”) and, based on a Community Trademark application, trademark protection may be obtained in the Protocol member states (“outgoing PIR Mark”), both solely based on the Madrid Protocol.
National Trademarks Of course, national trademarks may coexist with trademarks emanating from the aforementioned systems.
Community Trademark In More Detail
The Community Trademark (CTM) system is handled by a central trademark Office which is located in Alicante, Spain, and is officially designated as the Office for Harmonization in the Internal Market (OHIM).
Application Requirements Applicant shall be a national of a Member State of the Paris Convention, however, need not be a national of a Member State of the European Union. Non-EU´s must be represented by a qualified professional. A CTM application needs not be based on an earlier national application, although filing will often be based on a priority claim. The CTM can be filed in any of the official languages of the EU Member States, while one alternative official language (English, German, French, Italian or Spanish) must be specified, e.g. for possible Opposition proceedings. The filing in Alicante is possible electronically or by facsimile, and the OHIM almost exclusively communicates with the applicants via facsimile or electronic means. In addition, applications may be filed at the national Trademark Office of any Member State of the European Union. For matters requiring personal attention, we have an office in Alicante close to the OHIM.
Examination and Registration
Upon application, OHIM performs a search of prior CTM applications and registrations with respect to similarity with the filed mark. The results of this search will not be used for refusal, but are sent to the applicant as well as to the owners of the relevant CTMs found in the search for information only. OHIM itself does not search national registrations, but the Trademark Offices of several of the Member States conduct, upon request by the applicant expressed in the filing procedure and at additional costs, a search for any earlier national marks which could also lead to an objection and communicate such marks to OHIM in order for them to be included into a search report.
Opposition An Opposition period of three months runs from the publication date, within which the owner of any prior conflicting mark (CTM or CTM application or national trademark application in one of the member states) or of any other earlier designation right (o.g. Company name) may oppose the CTM registration. If at least one Opposition has been filed, a “cooling-off” period of initially two months commences in order to provide for time to negotiate a settlement of the Opposition between the parties. The “cooling-off” period may be extended upon common request of both parties by another 22 months within which, however, each party has the right to terminate the „cooling off“ period by the so-called „opting out“. If refused in Opposition proceedings, the application may be converted into separate national applications, for example, in the countries where the prior conflicting rights do not exist.
Seniority To allow for a transition from national registrations to the CTM, a seniority claim is available. A CTM application may claim seniority from a previous national registration in any Member State. This will permit applicant to make a CTM application covering all of the European Union Member States, while at the same time retaining his protection rights back to the filing date of his national registration. Having obtained the seniority right in the CTM application, the national registrations can be abandoned without loss of rights. This may result in considerable cost savings.
Registration and Genuine Use
The CTM has a duration of ten years, after which renewal is possible without proof of use. Validity of the mark requires genuine use in any part of the European Union. The registration is subject to cancellation if it has not been used inside the Union within five years from the date of registration or if the use has been suspended over a continuous period of five years. Currently, use in one member state is regarded as sufficient use.
Assignment and Licenses The CTM registration provides a single unitary right throughout the EU. Assignments or licenses with respect to the mark are registered at OHIM. Being unitary, the trademark cannot be separately assigned to different parties for separate countries. However, it can be licensed to different parties for separate countries. Assignments have to be executed in writing.
Litigation and Invalidity Infringements with respect to the CTM are dealt with by the respective specialized national courts under national law. However, invalidity proceedings are conducted at OHIM under the Community Trademark Regulation. A CTM may be revoked in view of conflict with prior rights, including a prior right anywhere in the European Union. This may be the only disadvantage of the CTM system; however, the CTM can be converted into national application.
The Madrid Agreement
For more than a hundred years, the Madrid Agreement concerning the International Registration of marks has provided for the possibility of obtaining the protection of trademarks or servicemarks in several countries by means of a single International Registration. The parties signatory to the Agreement are mainly countries from continental Europe (including the Russian Federation and most of the former republics of the Soviet Union), countries in the northern part of Africa and some countries in the Far East like China, the Democratic People´s Republic of Korea, Mongolia and Vietnam.
The Madrid Protocol
The Madrid Protocol is also administered by the World Intellectual Property Organization (WIPO) in Geneva. The Member States of the European Union except Malta have signed the Protocol. For example, Japan, the US, the United Kingdom, Norway, Greece, Denmark, Finland and Sweden, which are not party to the Madrid Agreement, are available for designation under the Madrid Protocol. Since the EU has ratified the Protocol from October 1, 2004, it is possible to designate the EU in an application under the Madrid Protocol. Conversely, it is possible to use a CTM application as the basis for an application of an International Registration under the Protocol. The language may be English, French or Spanish although the office of origin may restrict the applicant to one of these languages.
Innovations Introduced by the Madrid Protocol The major differences between the Madrid Agreement and the Madrid Protocol are:
• • •
English or Spanish as an optional procedure language besides French, Individual fees payable for (sole) Protocol States Time limit for notification of objections to protection by national offices is 18 months under the Protocol rather than 12 months under the Agreement
• C onversion of a Protocol trademark into national applications in case the Protocol mark has been revoked
• Intergovernmental organizations (like the European Union) may be a signatory party to the Protocol.
Costs of a Protocol Application In general, the same cost structure exists as with an application under the Madrid Agreement. However, the Protocol allows its Member States to claim higher official fees than under the Madrid Agreement. In fact, most of the Protocol States made use of this opportunity. This has to be taken into account when considering the possibility to use the Protocol way on the basis of a CTM application which may become rather costly.
Link between Protocol and CTM
The “link” between these two systems provides for the possibility of designating the European Union as one single region as CTM in a Protocol application (“incoming PIR Mark”) or to base a Protocol application on a CTM application as “home application” (“outgoing PIR Mark”). Regarding the question whether an applicant should seek protection in the European Union directly (by filing a CTM application) or through the Protocol, the following is important to note: There is a five year vulnerability of a CTM as part of a Protocol registration which provides for the risk of that CTM being turned down together with the Protocol registration following a successful “central attack”. This may be an argument against this way. However, even in such case a conversion of the CTM into national applications remains available. An “outgoing PIR Mark” is in any case solely available to EU nationals since the basic CTM application must act as home application. For EU member states signatory to both the Madrid Agreement and the Madrid Protocol, an outgoing PIR Mark on the basis of a CTM application may also be disadvantageous because of the significantly higher official fees payable for each Protocol designation.
Madrid Agreement & Protocol: Common Procedures
Application and Examination The national trademark authority receives the International Application and transfers the same to the International Bureau after it has verified and attested the existence of the necessary home application (Madrid Protocol) or home registration (Madrid Agreement). Under the Protocol, all European Union Countries and the European Union as a whole are available for designation. As opposed to the CTM system, the Madrid Agreement and the Madrid Protocol provide the applicant with a selective system to designate the countries desired. After the application reached the International Bureau, the national Trademark Offices of the respective designated countries or the OHIM each process their part of the application under their own provisions. The national offices of each country or the OHIM have 12 months, to raise objections. If no refusal of protection is received within said 12 month time limit, the mark may be considered as registered in the designated countries.
The examination procedures vary depending on the respective country. Especially for applicants from the United States, the very different practice with regard to drafting the list of goods and services at OHIM or in most European countries may result in legal disadvantages, compared with a direct CTM or national trademark application. Generally, a direct/national application can be filed with a broader list of goods and services and, thus, provides a broader scope of protection. In Germany or at OHIM, for example, where no examination with respect to existing registrations is made by the respective office, one can expect early protection at comparatively low cost. If objections or oppositions arise in a particular country, this might lead to a restriction or even a loss of protection in this country, without affecting the remaining countries (the European Union is regarded as one “country”). However, a successful attack on the home registration within 5 years from the date of registration will also have the very same impact on the entire International Registration.
Litigation and Invalidity The International Registration obtained under the Madrid Agreement and/or the Protocol provides the applicant with a bundle of individual national, or in case of a designation “EU”, regional rights. Infringement and invalidity proceedings with respect to the International Mark are handled by national courts under respective national provisions. An exception are invalidity proceedings concerning the CTM as part of the International Mark – which are conducted at the OHIM. Common to the national provisions is that the International Registration can be revoked in a country for non-use during five consecutive years. Thus, to maintain the trademark in each designated country, it must be used within each designated country. In contrast, as mentioned above the CTM needs only be used in part of the European Union to maintain its validity. However, the International Registration under the Madrid Agreement and/or the Protocol may be easier to obtain in some countries. Additionally, when attacking an International Registration, it will have to be attacked separately in each of the designated countries, except the aforementioned “central attack” during the first five years from the date of the International Registration.
Territorial Extension International Marks may be extended at any time by adding a designated country. Of course, the resulting national part of the International Registration in said extension country will receive the date of registration of the extension rather than the filing date of its basic registration.
National Trademarks in European Countries
Trademarks (and servicemarks, if applicable) registered by the national office of the European countries may coexist with International Registrations both under the Madrid Agreement and the Madrid Protocol, and with European Community Trademarks (CTMs). The introduction of the CTM system and the step-wise extension of the EU resulted in some loss of importance of European national trademarks. An applicant which seeks for trademark protection throughout the European market or at least in a number of EU member states, will usually choose the CTM way, due to its cost-efficiency and simple handling. However, national trademarks are still important for companies whose economical activity is limited to a certain country or only few European countries and/or whose financial resources are strictly limited. Although the CTM prosecution practice has a harmonizing impact on the national trademark practice in most EU member states, the outcome of the proceedings may well be different in the various countries.