European Trademark Protection

<h2>European Trademark Protection</h2>
Welcome to Plaskacz and Associates’ ‘LEGAL SOLUTIONS TO SOFTWARE ISSUES’ newsletter. This is a free information service provided by the law firm of Plaskacz and Associates. IT IS DESIGNED TO PROVIDE INFORMATION OF A GENERAL NATURE ONLY AND IS NOT INTENDED TO REPLACE SPECIFIC LEGAL ADVICE. Q1 2002

North American companies seeking to sell their products or services in Europe usually select a test market, generally the UK or France before expanding throughout the European Union. Along with this incremental step comes the question of where to protect one’s trademarks….only in the test market or throughout the European Union? Here is some information to help make that decision.
<h2>The Community Trademark</h2>
<h2>The System</h2>
The Community Trademark (CTM) was established by the European Council Directive # 4094 on December 20, 1993, effectively creating a single registration to cover all of the member states. The CTM did not supplant the national trademark laws of the member states but did create a parallel system.
<h2>The Advantages</h2>
The principal advantage for a trademark owner in obtaining a CTM registration is that registration, and renewal and maintenance of that registration, in the individual member states is not required. Whereas the cost of a CTM likely exceeds the cost of obtaining a registration in a single member state, it is significantly less expensive than obtaining registrations in three or more member states. A further benefit of a CTM is that usage in one or more member states satisfies the requirement to maintain the registration in the entire European Union. This has the effect of reserving your trademark for future use in the rest of the European Union where you may not yet to be doing business. It also has the effect of preventing trademark pirates from usurping one’s trademark prior to registration in another member state.
<h2>The Disadvantages</h2>
The main disadvantage in seeking to obtain a CTM is the conflict that one might encounter with a trademark for which rights have previously been obtained in any single country of the European Union. The Office for Harmonization in the Internal Market (OHIM) first examines the mark to determine whether it meets the formal legal requirements (i.e. distinctive character) and then searches whether the mark is potentially confusing with either a previously filed CTM application or a national trademark. While no official objection will be based on this review the search report will be forwarded to the applicant for consideration. When the application is published for opposition, OHIM will notify the owners of prior community trademark registrations listed in the search report but will not notify owners of earlier national rights. The owners of earlier rights may within three months of the date of publication file with OHIM a notice of opposition on any of the following grounds: a) a prior CTM application or registration; b) a prior national application or registration; c) a prior international registration extended to a member state of the European Union; d) a mark which has become in any member state well-known, as defined in the Paris Convention; and e) unregistered marks in any member state which under the law of that country can prohibit the use of a subsequent mark. Oppositions can become very costly and if successful have the effect of rejecting the application for all EU countries even though the application impacts prior rights in only one country. It is, however, possible to convert a CTM application into a national application without losing one’s date of priority.
<h2>The Decision</h2>
If your growth plans are limited to only a few European countries and you have no plans for further expansion, protection at the national level may be adequate. This is particularly true if your trademark is not sufficiently distinctive to avoid potential confusion with the marks of others. If, on the other hand, you are seeking to protect a mark that is strong enough to pass the onerous test of distinctiveness on a European scale it would be a better decision to protect your mark throughout the European Union by obtaining a CTM. The most sensible approach to making this determination would be to have a qualified trademark agent secure a preliminary search on your behalf.

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