When should a company, interested in doing business in Europe, apply for a Community Trademark (referred to as a “Community Trade Mark” or “CTM” in Europe) or a national trademark? Previously, weighing the options did not necessarily require extra funds as both a community and national search report was completed. However, a revision of the Community Trade Mark Regulation by European Council Regulation No 422/2004 made national trademark application search reports optional and performed only when explicitly requested and purchased for €192.
To understand when the extra cost and search is worth your company’s investment, it is important to evaluate the unique features of the CTM and the national trademark.
The Community Trademark
The CTM system provides a single registration process for granting its proprietor an exclusive right to use its unique mark to differentiate itself from similar products in the 27 member states of the European Union. While the CTM’s one registration procedure is convenient, if the trademark application is successfully opposed in any one state, the entire submission collapses.
Some of the benefits of the CTM include: 1) the use of the CTM in a single member state is generally sufficient to protect your trademark for the entire EU; 2) the option to assign a CTM becomes an asset to your business; and 3) as the EU expands, so does the coverage of your CTM.
The National Trademark
If your application for a CTM is successfully opposed or your company plans to only direct marketing efforts in a few EU countries, the choice to purchase the extra national search – and likewise register a trademark in individual Member States – should be considered. In some instances, it is a necessity. Such is the case in Greenland where a Danish trademark, not a CTM, affords your company protection.
LegalTEAS Lesson: If your company is considering obtaining trademark protection in Europe, an application should be filed expeditiously and any available priority rights should be implemented so that the execution of the trade mark registration can be backdated. In accordance with the WIPO Paris Convention for the Protection of Industrial Property, if you apply for a United States trademark and then submit for a CTM within a six month period, the submission date of your United States trademark will be assigned as the priority date of your CTM.
