The Montana iP Trademark Blog

The European Union introduced the Community Trademark (or “CTM”) on 1 April 1996 to allow trademark owners to obtain protection for their marks as a single registration covering all EU Member States. A CTM is registered in accordance with the CTM Regulations with the Office for Harmonization in the Internal Market (“OHIM”) based in Alicante, Spain.

There are several advantages to registering a CTM for your mark as opposed to individual national registrations. These can be summarised as follows:

A single CTM registration gives protection for all 27 Member States of the European Union - an area which covers more than 350 million consumers.

The official registration fees of a CTM cost no more than the fees for around 3 national registrations. So broadly speaking, you get coverage in 27 countries for the price of 3. The application process is also easier: you simply file one application, pay a single fee and have the convenience of having to deal in only one of the official EU languages of your choice.

Upon future enlargement and expansion of the EU to other countries, any pending CTM application or valid registration will automatically be extended to include the new Member State(s) - without further payment or additional formalities.

A valid CTM registration gives the registered owner the exclusive right to use that mark in respect of the goods and services for which it is registered, across the entire EU territory, for a period of 10 years.

Registrations are renewable indefinitely for further 10 year periods upon payment of a single renewal fee. As is the case with most national trademarks, if you fail to make real commercial use of your CTM during any 5 year period after the registration date, your mark is potentially vulnerable to cancellation for non-use by a third party. However, in the case of a CTM, such use only needs to take place in ONE Member State in order to maintain the mark across the entire EU. Contrast this with individual national registrations, where a mark would need to be used in every single territory to avoid potential non-use cancellation in each of those territories.

Unlike the International Trademark system, ownership of a ‘home’ application or registration is NOT a pre-requisite for filing and obtaining a CTM. Nor do you have to be domiciled in the EU in order to be able to file a CTM (although applicants who are not domiciled in the EU or who do not have their principal place of business or a real and effective industrial or commercial establishment in the EU do need to use an authorised legal practitioner or professional representative to act for them).

If you are the owner of an existing national registration in an EU Member State, you may claim ‘seniority‘ for your CTM application based on the registration date of your national mark. In so doing, this establishes rights in your CTM for the Member State concerned dating back to the effective date of the national mark on which your seniority claim is based. It also removes the need for you to have to maintain both marks - the seniority gained for your CTM means your national registration may be allowed to lapse on next renewal, thereby saving costs in renewal fees.

Since the 1st May 2009, the official fees for filing and registering a CTM online in up to 3 classes have been reduced by 40% to €900 (about UK£763 or US$1,245 at today’s exchange rate), making it cheaper than ever before to obtain a CTM.

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If you would like more information about the issues raised in this article, or are interested in pursuing a Community Trademark Registration, please call +44 1932 827334 or send an email to the author at info@montana-ip.com. A copy of this article is also available to download in pdf format.