EU Trademarks Law
European Community (EU) Trademark Registration
If you choose to register your trade mark in Europe, the single EU trademark registration grants an exclusive right in the 27 Member States of the European Union. The Community Trade Mark (CTM), administered by OHIM, was introduced in 1996 to cover the whole of the European Union and is valid in all these 27 Member States. The trade mark process is governed by the Community Trade Marks Regulation 1996 (the 'Regulation'). When an application is filed with OHIM a Trade Marks Examiner will be appointed to ensure that your proposed trademark complies with Articles 7 and 8 of the Regulation (Absolute and Relative Grounds for Refusal).
A CTM is valid in the European Union as a whole and is valid for 10 years. Like UK trade marks a CTM confers on its owner an exclusive right to use the trade mark and to prevent third parties using without consent registered identical or similar marks for identical or similar goods and/or services.
As with any UK trademark application it is recommended that a trade mark search and advice report is carried out prior to an application, although this does not in itself guarantee a successful application. Much will depend on the particular Examiner assigned to examine your proposed mark. The Examiner will take into consideration his own thoughts and interpretation of the Regulations and subsequent case law as well as the Trade Marks Rules and Trade Mark Manuals when considering the suitability of the proposed trademark. This subjectiveness can lead to an ambiguous system of EU trademark registration (see Absolute grounds below). Nevertheless where objections are raised by an Examiner, an opportunity will be granted to appeal the decision.
EU TradeMark Registration Grounds for Refusal
Absolute Grounds for Refusal (Art. 7 of the Regulation)
An Examiner will assess whether your proposed trademark has sufficient distinctive qualities so as to function as a trade mark i.e. that it distinguishes the goods /services which you offer from those of your competitors. Generic marks or descriptive marks may be refused. The addition of a logo can often increase the descriptive trade marks chances of success.
Relative Grounds for Refusal (Art. 8 of the Regulation)
An Examiner will conduct a trade mark search of the EU and WIPO trade mark registries to identify any existing identical or similar registered or pending trade marks which may be raised against your proposed trade mark. A Trademarkroom search and advice report will highlight similar/identical marks prior to an application being made and advise on the risks of proceeding.
If the Examiner does not raise an objection against your proposed trade mark it will be advertised in the Trade Marks Bulletin for a period of 3 months. During this period a third party may raise an opposition to prevent it from proceeding to registration. An opposition is usually raised by those who have earlier registered or unregistered rights.
If an opposition is raised against your proposed trade mark, it can significantly delay the application process and opposition proceedings may be commenced. The burden of proof will be on the opponent to show that the marks are conflicting (under relative grounds). However, you are advised to ensure that you keep all documentation which is associated with your trade mark such as sales and marketing in the event that an opposition is raised against your proposed trade mark.