What is a Community Trade Mark?
A Community Trade Mark (“CTM”) is a single registration that protects your trade mark in all 25 countries of the EU*.
If you are trading in more than one country of the EU, the CTM system is probably the most suitable means by which to register your trading name/s and thus enable you to rely upon the protection and safeguards that registration provides.
How Does a CTM Work?
Simple. An application is filed at the Community Trade Marks Office (otherwise known as the Office for Harmonisation in the Internal Market or “OHIM” for short) which then carries out an examination as to whether the application meets the requirements for registration. So long as there are no objections, or when such objections as might arise have been overcome, the mark is registered. A CTM registration lasts for an initial period of 10 years and, subject to payment of renewal fees at 10 year intervals thereafter, it can last forever.
What Rights Will a CTM Give Me?
The right to stop others from using a mark that is the same or similar to the one that you have registered, and a defence against someone else registering their mark and then objecting to the use of your mark (which can happen even if you have the earlier use). Of course trade mark law is more complicated than this and when disputes arise you will need expert guidance as to how your rights can best be enforced. The rule of thumb, however, is simple – registration is always the best way of enforcing and safeguarding your trade mark rights.
Could My Application Be Refused?
Yes. To be registrable, a mark must be:
- Distinctive
- Free from conflict with prior rights of others
The test for what constitutes a “distinctive” mark is generally not too difficult to pass, but if your mark is directly descriptive (“ROUTEPLANNER”), allusive (“DOUBLEMINT”), laudatory (“BEST”), etc. then the CTM Office will not register the mark.
Prior rights of others will prevent the registration of your mark only if the owners of those prior rights object. If, however, there is a prior conflicting right in just one of the 25 EU countries covered by your CTM application, and if the owner of that prior right successfully opposes your application, your application will be refused in its entirety.
In such circumstances, however, all is not lost. If necessary, a refused CTM can be converted to a series of national filings in order that registration can be secured in the countries where there are no prior conflicting rights.
What is the Cost?
In comparison with national registrations, the CTM system offers a very cost-effective way of protecting your trade marks.
The Community Trade marks Office charges approximately £650 for an application in up to 3 classes of goods/services. We charge £300 at filing. When the registration process has been completed, the CTM Office makes a final charge of about £750 and we charge £350. The total cost of a CTM registration in up to 3 classes is therefore just over £2000. If your mark needs to be protected in more than 3 classes, there are additional fees/charges that total about £400 per class.
*EU Member Countries - April 2005:
Austria, Belgium, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden, United Kingdom
