The Community Trade Mark

1
The Community Trade Mark Seminar on Trademarks
and Designs Warsaw, 28. November 2006 Dr. Jörg
Weberndörfer
2
First - OHIM an EU Agency
3
Office for Harmonization of the Internal Market

• - Created through Community trade mark Regulation
  (CTMR)
• - Decentralized agency of the EU
• - Around 700 staff from soon 27 Member States
• - Self-financed through fees

4
The Seat of OHIM
5
WHAT IS A COMMUNITY TRADE MARK (CTM)?

• A sign that identifies and distinguishes goods
  and services
• Valid in the whole territory of the European
  Union
• Has unitary character
• Registered by the OHIM in accordance with the CTM
  Regulation

6
COMMUNITY WIDE TRADE MARK PROTECTION
Since 1996 The Community trade mark
7
MAIN ADVANTAGES

• Reduced administrative burden
• Only one Office to deal with
• One single application
• One legal system
• One single language (out of 20 to choose)
• One single file to be dealt with
• One single fee system
• Obligation to use easy to be met
• Uniform protection throughout the EU.

8
LANGUAGES
EU
OHIM

• Czech
• Danish
• Dutch
• English
• Estonian
• Finnish
• French
• German
• Greek
• Hungarian

• Italian
• Latvian
• Lithuanian
• Maltese
• Polish
• Portuguese
• Slovak
• Slovenian
• Spanish
• Swedish

• English
• French
• German
• Italian
• Spanish

9
WHO CAN BE CTM OWNER?

• Accessible for everybody!
• Anyone from any country in the world may be the
  owner of a CTM.
• Any applicant without a seat or real and
  effective establishment within the EU needs to be
  represented by
• A legal practitioner
• A professional representative authorised to act
  before the OHIM
• An employee

10
HOW MUCH DOES IT COST?

• Reduced fees since 22/10/2005!
• Application fee
• 900 EUR incl. 3 classes of goods/services in case
  of paper filing
• 750 EUR incl. 3 classes of goods/services in case
  of e-filing
• 150 EUR for each additional class
• Registration fee
• 850 EUR incl. 3 classes of goods/services
• 150 EUR for each additional class

11
DURATION OF REGISTRATION

• Duration
• 10 years from the date of filing
• Renewal
• Every 10 years, provided that the renewal fees
  are paid (indefinitely possible!)
• Renewal fees
• 1.500 EUR paper renewal
• 1.350 EUR e-renewal

12
WHICH SIGNS MAY BE COMMUNITY TRADE MARKS?

• Two conditions
• Signs which distinguish the goods or services of
  one enterprise from those of another
• Signs which can be represented graphically,
  particularly words, including personal names,
  designs, letters, numerals, the shape of goods or
  of their packaging

13
What can be a Community Trade Mark?
WORDS (word marks)

Adidas Starbucks Whirlpool Nestlé
Volkswagen Sony Harley Davidson Philips
Just Do It Orange Siemens Lays Red Bull
Java Vodafone JVC Gatorade Coca Cola
Shell Ford Apple Levis Rolex
Microsoft PepsiCo RayBan Zippo
Bic MGM Petronor Herbalife EMI Sellotape
Pfeizer

14
What can be a Community Trade Mark?
LOGOS (figurative marks)


15
What can be a Community Trade Mark?
OBJECTS (3-D marks)


16
What can be a Community Trade Mark?
SOUNDS (sound marks)
?
?

?
?
?
?
(Tarzan yell)
(Popping)
(Sound of tennis balls being hit)

17
What can be a Community Trade Mark?
COLOURS OR COMBINATIONS (colour marks)


18
What can be a Community Trade Mark?
OTHERS ?

• Olfactory Marks (smells)
• Movement Marks
• Holograms
• Though acceptable in principle, graphic
  representation is problematic with such marks.
• Smell marks have already been ruled out by EU
  courts

19
EXAMINATION OF THE APPLICATION
Filing
Classification, Formalities examination
10-12 months
Search and translation
Absolute grounds examination
Publication
18-20 months
Opposition (inter partes proceeding)
Third parties observations
Registration
Partial and total refusal
20
ABSOLUTE GROUNDS EXAMINATION

• absolute grounds relating to the sign itself
• Examined ex officio for all applications
• Grounds based on the interest of the consumers
• Prohibition of illicit signs (deceiving or
  contrary to public order and morality)
• Grounds in the sake of a free competition
• Refusal of signs which are not distinctive,
  descriptive or generic.

21
PUBLICATION OF THE APPLICATION

• Publication
• date opens 3-months delay for filing opposition
  
• here 3-dimensional trade mark

22
OPPOSITION PROCEDURE
PUBLICATION
NOTICE OF OPPOSITION (OPPONENT)
NOTIFICATION TO APPLICANT
ADMISSIBILITY EXAMINATION
COOLING OFF PERIOD
START OF WRITTEN PROCEDURE (observations from
parties, proof of use, etc.)
EXAMINATION AND DECISION ON OPPOSITION, COSTS AND
APPLICATION FOR A CTM
23
RELATIVE GROUNDS EXAMINATION (EXTRACT)

• Relative grounds for refusal conflicts with
  earlier rights of third parties
• Not examined ex officio by the office
• Only if an opposition is lodged by the owner of
  the earlier right
• Delay 3 months as from the publication of the
  application

24
REGISTRATION

• If no opposition or if opposition rejected
• CTM proceeds to Registration
• Request for payment sent to applicant/representati
  ve
• Published again as registered CTM in CTM Bulletin
  (Part B)
• Certificate sent out

25
AND NOW?

• Congratulations You are the owner of a CTM!
• Put the CTM to use in at least one Member State
  (within 5 years)
• Observe the market and defend your right against
  subsequent conflicting applications!

26
LINKS BETWEEN NATIONAL AND COMMUNITY SYSTEMS
27
Different ways to protect trade marks within the
EU

• National system
• International system
• Trade Marks Madrid system and/or Madrid Protocol
  for trade marks (Designs Hague Agreement)
• Community systems
• Or a combination of these systems
• (at the free choice of the applicant)

28
(1) The national route
File individual applications at each of the
national TM offices
ALWAYS Translation Costs Lawyers Fees
Each protection title subject to the different
national laws
29
(2) The international route
A home application/registration is needed Request
in EN, FR or ES - basic fee to be paid
Individual fees are payable to the national TM
offices
In case of problems Translation Costs Lawyers
fees
No single unitary right is granted - bundle of
rights - subject to national law of each country
30

(3) The Community route

• EU as a single territory
• 1 application, 1 file, 1 fee
• 1 unitary right
• Single legislation - interpreted by the same
  Courts
• publication in 20 (22) languages (translations
  to other 19 (21) needed)

31
Inclusion of OHIM in the international route

The international Trade Mark route is based on
the Madrid Agreement/Protocol OHIM joined the
Madrid Protocol on 10/2004 The international
Design route is based on the Hague Agreement It
is assumed that OHIM will join it in the second
half of 2007 Result OHIM can be either the
office of origin or the office of designation
32
EQUIVALENCE COMMUNITY FILING / NATIONAL FILING

• Filing of a CTM application
• ? regular filing in each Member State
• ? effect of 23 (soon 25) national applications
• filed simultaneously

• CTM application may impede subsequent
  registrations at national /international level in
  the EU
• National applications in the EU may impede
  subsequent registrations at Community level

33
Links between national and CTM system 1.
SENIORITY

• Allows proprietors of national trade marks to
  group them into the CTM

Requirement Triple Identity of trade mark,
goods/ services and owner
Goal Simplification of administration and
reduction of costs of the trade mark portfolio
34
SENIORITY
SUCHARD
35
SENIORITY
SUCHARDCTM 31294
36
Conversion

Links between national and CTM system 2.
CONVERSION
CTM application withdrawal or refusal

• national(s) trade mark(s) application(s)
• national(s) trade mark(s) application(s)

Registered CTM Surrender, revocation,
invalidity, non-renewal
Goal Maintaining the filing/priority date of the
CTM
37
THE EU ENLARGEMENT Legal Implications?

• Art 142 (a) CTMR 3 Rules
• Automatic extension for free!
• Grandfathering of CTMs
• Respect of acquired rights in new Member States
  via possibility of protection against the use of
  acquired CTMs in the national territory

38
APPEAL PROCEEDINGS
LUXEMBOURG
ALICANTE
39
CTM COURTS

• Competent for infringement actions (full details
  Art. 92 CTMR)
• Designated by the respective countries
• List of competent courts http//oami.eu.int/en/ma
  rk/aspects/default.htm

40
Community Trade Mark Statistics

General Statistics
Executed at 15/11/2006

41
Accumulated CTM Applications


42
Accumulated CTM Registrations


43
Oppositions Filed Against CTM Applications


44
Cancellation Applications Filed


45
Community Trade Marks Cancelled


46
Top Ten CTM Filing Countries


47
Type of Marks Filed


48
Top Ten CTM Owners


49
Top Ten CTM Representatives


50
Community Trade Mark Statistics

CTM Statistics for POLAND

51
CTM Applications from Poland


52
Registered CTMs from Poland


53
Type of Marks Filed by Polish Applicants


54
Top Ten Polish Applicants


55
Top Ten Representatives in Poland


56
General Information ? ( 34) 965 139 100 ? (
34) 965 131 344 ? information_at_oami.europa.eu
? Office for Harmonization in the Internal
Market (Trade Marks and Designs) Avenida
de Europa, 4 E-03008 Alicante SPAIN