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
900.00 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 £150.00 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 upon
payment of registration fees being £250.00 for our services and
850.00 Euro for official fees for an application covering up to
three Classes.
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.
|
LONDON