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Pros and Cons of Community Trade Mark Registration

What is a Community Trade Mark?

A Community Trade Mark (CTM) is a single trade mark registration that provides protection in all of the member states of the European Union. CTMs are dealt with by the Office for Harmonization in the Internal Market (OHIM) in Spain, and over 117,000 applications were filed last year.

If you conduct business in the UK only, then a national registration is for you, and we can advise separately in this respect. If, however, you do business in more than one EU country, it is wise to consider filing for a CTM. This article sets out the pros and cons of doing so.

Pros

1) Cost

The official fees in relation to a CTM application in three classes are 900 Euros, with 150 Euros per additional class filed at the same time. This is a very reasonable cost for an exclusive right in all current and future Member States of the European Union, and of a significantly lower level than filing national applications in each country. As new Member States join the EU, existing CTMs automatically expand.

Registration of your trade mark means that it can be used and enforced in a market of almost 500 million consumers.

2) Easy administration

Applications may be filed online in any language of the EU. When renewal falls due after ten years, there is only one right to be dealt with, as opposed to a bundle of national rights. Further, national rights may be allowed to lapse, in order to rely on the CTM, through claiming “seniority”. Licences and assignments may be recorded in one place. Lowering the administrative burden allows cost savings.

3) Fast Results

A CTM may be registered relatively quickly. For a simple application with no objections or oppositions, it can be as little as 6-9 months from filing to registration. This is not as fast as obtaining a national registration in the UK, though still compares favourably with several other countries.

Cons

1) Unitary Right

A CTM is “unitary” in nature. Therefore, if another trade mark proprietor has a national right in an EU country, they may be able to attack your CTM in its entirety. However, in such circumstances it is possible to “convert” your application to national trade mark applications in those countries where the prior right does not exist.

2) Possibility of Oppositions

CTMs may be opposed in the same way as national applications, and there is a larger pool of potential opponents. Such parties may consider your trade mark to be similar to their own under their usual rules of comparison, which may be different from those of the UK.

3) Summary

If your business is trading or soon to commence trading in more than one EU country, the CTM route to trade mark registration should be considered, since it provides very cost effective EU wide trade mark protection.

For further information contact us at [email protected] or call on 01223 421779.

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October 22, 2015 Rachael share this article