This synopsis of complex procedures cannot, and is not intended, to replace proper advice on individual requirements.
Registration of a Community Trade Mark
A Community Trade Mark or CTM provides protection by means of a single registration covering the whole of the European Union.
This can be enforced in any one of the member states of the EU.
Registration of a Community Trade Mark is granted by the Office for the Harmonisation of the Internal Market (Trade Marks and Designs) located in Alicante, Spain. This Office is normally referred to as "OHIM".
Professional Representation
Alexander Ramage Associates is a recognised firm of Professional Representatives authorised to act in all matters before OHIM, and all of our senior professionals are fully qualified to act as European Trade Mark Attorneys.
The Cost of an Application for a Community Trade Mark
The cost of our preparing and filing an application to register a Community trade mark covering goods or services falling in up to three Classes is £300.00 and in addition official fees of 920.00 Euro must be paid. If the goods or services to be protected fall in more than three Classes then additional Class fees must be paid.
What happens next
When the filing formalities have been concluded, the application will be examined by the OHIM's Trade Marks Examiners. Registration must be refused if the trade mark is thought to be a simple descriptive or laudatory term. Argument can be filed against any formal objection, and if the mark has acquired distinctive character as a result of use made of it throughout the EU, it will be accepted on proof of that being made.
A limited search against potentially conflicting prior rights will also be conducted against trade mark rights existing on the Community Trade Mark Register or on the Register of certain member states. Although the applicant will be notified of the outcome of these searches, registration of the trade mark will not be refused on this basis unless the proprietor of a relevant earlier trade mark right brings successful opposition proceedings.
However, a decision might be made now whether to seek to avoid the possible expense of future opposition proceedings by restricting the scope of the application or, indeed, by withdrawing it completely.
Further costs, acceptance and grant
It is not possible to say what costs will be incurred at this stage. These depend upon what objections are taken and how long it takes either to argue against them with the Examiners or to decide upon an appropriate limitation to seek to avoid conflict with prior trade mark rights located in the searches.
If no objection is taken, formalities issues surrounding acceptance are unlikely to exceed £230.00 to take the application to the next stage. If objections are taken, at least £500.00 should be budgeted to take the application to the point of acceptance to proceed to the next stage, or to the point it becomes clear acceptance will not be secured at all or will be secured only on expenditure of significant sums.
Once any formal objections are overcome, the application is published for opposition purposes. If no opposition is filed, or is successfully contested, the application proceeds to formal registration.
When the Community Trade Mark has been registered, it will be effective in all countries of the European Union to be enforced against conflicting trade marks either by means of infringement action through one of the Community Trade Mark Courts to restrain unauthorised use, or by means of opposition filed in OHIM. Alexander Ramage Associates has staff qualified to advise and act for you both in infringement actions brought through the Community Trade Mark Court in London or in opposition or revocation actions brought through OHIM.
If the Mark is refused
If it appears that trade mark cannot be secured as a Community Trade Mark because of some formal objection, or because of some prior national right it is possible then to consider whether to seek to convert the application into a National application or series of National applications covering one or more individual state of the European Union, in which the blocking objection does not apply.
Although the cost of securing a Community Trade Mark may appear significant, it compares very favourably with the cost of seeking protection in each individual member state of the European Union.
Also, it must always be remembered that if an application to register a Community Trade Mark runs into trouble, there is the option to convert the CTM (on payment of additional fees), and seek protection in individual states of the European Union if this looks like a preferable alternative.
Please note that all costs indicated exclude VAT at the applicable rate.
