The European Trademark

  1. What is the Community trademark
  2. How to file a Community trademark application
  3. The procedure of registration
  4. The opposition by third parties
  5. The appeal against the Office’s decisions
  6. Withdrawal and limitation of the application
  7. Assignment of the trademark
  8. Regulations

1. What is the Community trademark

The Community trademark instituted with Regulation no. 40/94 of the EC Counsel allows to obtain with a single application a trademark valid in all the territory of the European Union. The Community trademark is a single title in the sense that it can be registered, assigned, withdrawn, declared null or expired and the use thereof can be banned only for the whole Community and not for the single states. Legitimated for the registration of a Community trademark are the natural persons having citizenship or domicile in a member state, the legal persons having their registered office or a stable organization in a member state and also the natural or legal persons having citizenship, domicile, registered office or a stable organization in one of the states adherent to the Paris Convention or to the Agreement that institutes the World Trade Organization (GATT). This system of registration coexists with the system of registration of national and international trademarks according to the Madrid Agreement.

Before filing a trademark it is necessary to choose how to file it, whether verbal or graphic, in which classes to register it and where to register it. It is also important to do a novelty search to make sure that the mark that has been chosen has not already been registered by others. If you have not already done so, we suggest you read the section Registering a trademark, which gives useful advice on the matter.

Once the preliminary analysis has been done carefully and, as it is always advised, with the help of an expert consultant in the field, the filing of the application for registration can be done.

2. How to file a Community trademark application

The application for registration of the Community trademark can be filed with the Office for Harmonization in the Internal Market (OHIM) that has its head office in Alicante (Spain), personally, by post, by courier or by fax, or with the central Office of the Industrial Property (for Italy the Italian Patent and Trademark Office), which will have to forward it to the OHIM within 2 weeks from the filing. To file an application for registration it is necessary to fill in a specific form that is downloadable also from the Internet, in which the information on the applicant, who will become the holder of the trademark, the information on the trademark and the classes of goods or services that the mark wants to protect have to be indicated. As we have already said, the choice of the classes has to be made with particular care consulting the Nice Classification of reference, and paying attention to checking which the edition in force is at the moment of the filing of the application. On the basis of the recent tendencies of the office it will not be possible anymore to indicate the number of the class but it will be necessary to make a list of the goods and the services of interest.

A sample of the mark will have to be attached as well, in colors or black/white according to the choice that has been made; administrative fees and official fees will have to be paid, which vary on the basis of the type of trademark and of the classes that are chosen.

In case of application for registration of a collective mark, a copy of the rules on the use of the mark has to be attached as well. The filling in and the sending of the application for registration of a Community trademark can appear to be simple but it is good to remember that the difficulty, often high, lies in the preliminary choices that have to be made BEFORE filing the application. The extension to the whole European Union of the validity of this type of trademark determines the need for greater care in the choice of the sign since also a trademark present in a single state of the Union could determine the refusal of the application. It is therefore appropriate to consult an expert and not to proceed on one’s own.

3. The procedure of registration

Once the application for registration has been filed, an application number and date are obtained, and from that date the examination of the file starts.

A first formal and technical exam is conducted by the office, which checks that the application meets the formal requirements and the absence of the so-called absolute impediments to the registration. For example, a mark that is contrary to good behavior can be refused directly by the office, as well as an offensive mark.

Instead, if the mark overcomes this exam done by the office, then it is published. From the publication date there is a period of 3 months within which anyone who considers himself damaged by the trademark application since he thinks that trademark is similar to his own preceding trademark or because as such it violates his rights, can file Opposition to the registration with the OHIM.

If opposition is filed, ad administrative procedure starts in the course of which the person who has applied for the trademark will be able to defend himself in front of who has filed opposition to the trademark registration and at the end of this procedure a decision will be issued that will be for the grant or the refusal of the trademark. Once the eventual opposition phase is finished positively, or once the period of three months has expired without oppositions, the trademark is published and registered in the classes indicated in the application.

Such a mark confers to the holder the exclusive right to use that name in the whole territory of the European Union for 10 years, even if at the expiry date it is possible to proceed with its renewal for other 10 years. The trademark expires if it is not used for a period of 5 years starting from the registration. If the application for registration of a Community trademark is not accepted due to impediments existing only in some countries of the Union, the application can, under certain conditions, be converted into a national application in the other states in which this impediment does not exist.

4. The opposition by third parties

The holders of trademarks or pre-existing rights can oppose to the registration of a trademark within 3 months as from the publication of the application. It is good to remember that by pre-existing rights it is not intended only preceding Community trademarks but also national or international trademarks that have validity in one state of the European Union. Oppositions are often very articulated and are not always prosecuted in the Italian language.

In order to file opposition it is necessary to fill in a specific form, available on line, to attach a copy of the preceding trademarks or proof of the preceding rights and to motivate adequately the complaint. Moreover, the opposition fees foreseen at the moment of the filing will have to be paid.

Once the opposition has been received and its admissibility has been checked, the OHIM informs the holder and assigns to the parties a term to file proof and arguments to support their own reasons, after which it issues a decision.

In this phase it is of fundamental importance to be assisted by an expert consultant since the documents that have to be filed will have to contain legal argumentations that are often very complex.

5. The appeal against the Office’s decisions

Against the regulations with which the office refuses, totally or partially, an application filed, it is possible to file an appeal within 2 months with the Appeals Commission. The appeal has to be adequately motivated in facts and in law. The sentences of the Commission can be challenged before the First Instance Tribunal and then before the Supreme Court (check). Given the nature and the difficulty of the procedure it is necessary to be represented by an expert in the subject.

6. Withdrawal and limitation of the application

At any moment between the filing of the application and the grant of the trademark, who has filed the application can always withdraw it (and therefore renounce to it) or limit it, for example by reducing the number of classes initially claimed. It may be necessary to withdraw or limit the trademark, for example, when there is a conflict with a third party that claims pre-existing rights. Amendments to the trademark application can be made but only within rigid limits and without altering or widening the substantial protection of the trademark. An amendment not just allowed but due is that relative to the change of address of the holder. Changes in the registry, withdrawals and limitations have to be communicated to the office by filing a specific petition for recordal.

7. Assignment of the trademark

A trademark, apart from used, can be assigned or licensed to third parties. In the first case, it is something analogous to a sale, by which the trademark changes “owner”; in the second case, it is a sort of “rent” with which the use to third parties is granted. The trademark assignment contracts are very delicate. It is necessary in fact to have a wide knowledge of the trademark that is being sold, but above all purchasing, therefore a technical analysis is appropriate for checking that the trademark is alive, that there are no potential or real conflicts, that there are no co-existence agreements and the like. All that is obtained by making the trademark undergo an accurate analysis (the so-called due diligence) without which there is the risk of purchasing an “empty box”. Another relevant aspect is that of the value of the trademark, something that is not easy to assess without the help of an expert. The assignment, or license, of a trademark has to be recorded with the OHIM with a specific petition for recordal. The recordal is necessary for the effectiveness in front of third parties and above all to safeguard the assignee or licensee party.

8. Regulations

Regulations (CE) no. 207/2009 that have substituted Regulations (CE) no. 40/94 of 20.12.1993.