Community Trademark Filing Guide
I. GENERAL
A. Rights Afforded by Registration
Registration is mandatory to establish rights to a trademark; this is a "first to file" jurisdiction.
Use of an unregistered mark for any goods or services is legal.
B. Time Frame for Obtaining Registration
The approximate time from application to registration (for a regular prosecution, without opposition) is: four to nine months.
C. Advantages of Registration
The benefits of registering a trademark include the following:
it provides prima facie evidence of ownership and validity;
it provides regional/national/local protection;
it allows use of "Registered Trademark" or other suitable abbreviations to demonstrate ownership of the trademark;
it allows access to bring actions in particular courts;
it helps to deter others from unlawfully using the trademark;
enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
it encourages licensees and provides the opportunity to generate royalties through licensing;
the risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in the European Union.
ⅡFILING
A. Requirements
If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.
Joint applicants are permitted in this jurisdiction.Neither actual use nor intent to use is required for application.The following information is required to complete an application:name and address of the applicant;state or country of incorporation;representation of trademark (a depiction of the mark an applicant seeks to register);list of goods/services;official filing fee;a request for the registration of a Community trademark.While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:name and address of the applicant;representation of trademark (a depiction of the mark an applicant seeks to register);list of goods/services;a request for the registration of a Community trademark.The list of goods and services in this jurisdiction may specify:the relevant Class heading (for most classes, with the exception of classes 6 ,7, 14, 16, 17, 18, 20, 37, 40 and 45 which contain general indications that are considered too vague for classification purposes);a list of names commonly used in the trade for the specific goods or services of interest;the relevant entire (long) alphabetic class listing.Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:only in response to an official request.In this jurisdiction, the following type of registration is available:regional;international.This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.This country is a member of the European Union; a Community Trade Mark registration is effective in this jurisdiction. (See the entry for the Community Trade Mark.)No multinational regional registrations are available in this jurisdiction.An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid Agreement and Protocol.)Applications can be filed online at the following URL: Go to https://oami.europa.eu/ and navigate to "apply for a trade mark" under Online Services. The official file can be accessed online at the following URL: Go to https://oami.europa.eu/ and navigate to "eSearch plus" under Search. Applications are officially searched as to prior trademarks (This takes approximately two to three months. There is no formal examination of prior marks, although a search of earlier Community marks is performed by the European Union Office. Applcants can "opt in" for searches by certain member countries for prior national marks. The results are communicated to the applicant without official consequences to the application.).
B. Priority If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)An International registration can be based on a national application or registration in this jurisdiction.
C. Classification This jurisdiction uses the Nice Classification System.If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes: three.
D. Representation An application to register a trademark may be filed directly in this jurisdiction by:the applicant, even if not a citizen of or domiciled in the jurisdiction (Thereafter a trademark representative/attorney/agent, a citizen of or domiciled in the jurisdiction, will have to be appointed.);a trademark representative/attorney/agent, even if not a citizen of or domiciled the jurisdiction(Thereafter a trademark representative/attorney/agent, a citizen of or domiciled in the jurisdiction, will have to be appointed.).
Ⅲ. APPLICATION A. Publication The filing particulars of an application are made available to the public.The filing particulars are made available to the public:through publication and online.The following application details are made available to the public:mark;name of applicant;address of applicant;application number;application date;goods/services;priority claim information;representation of trademark;seniority claim information.
B. Examination Applications are examined in respect of:formalities: i.e., for compliance with the filing requirements;classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;clarity: i.e., that descriptions are clear, and are understandable;descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services).This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).The order of the application process is as follows:Examination, publication, registration.
C. Prosecution Accelerated examination may not be requested.The following rights are established by a pending application:the filing date of the application establishes a home filing date for purposes of priority;the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application.
D. Opposition An application can be opposed.The following can be grounds for opposition:proprietary rights, such as an earlier conflicting registration;rights under Article 6 bis of the Paris Convention (notorious or well-known mark);rights under Article 6 septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);a non-registered trademark or another sign used in the course of trade of more than mere local significance (if, pursuant to Community legislation or the law of the Member State governing that sign, such sign confers on its proprietor the right to prohibit the use of a subsequent trade mark). Other signs used in the course of trade include business identifiers such as:
- rights under Article 8 of the Paris Convention (trade names);
- corporate names;
- establishement names;
- titles of publications or similar works (if they have an ‘identifying’ function and act as a business identifier);
- domain names (if used in a way that they are protected as a non-registered trade mark or a business identifier under the applicable national law); and
- geographical indications (provided that they are used in the course of trade and to the extent that they allow the proprietor to prevent use of a subsequent mark).An application is published for opposition purposes after formal examination of the application.The opposition period begins on the following date: at publication or six months after publication by WIPO of an International Registration.The opposition period ends on the following date: three months after the opposition period begins.The following parties may oppose an application:the owner of an earlier right;a licensee, if the license is exclusive.
Oppositions can be filed online
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