1. What is the Community Trade Mark?

The Community Trade Mark (CTM) offers the opportunity to protect a trademark in all of the countries of the European Union (EU) by filing a single application. The countries covered are Austria, Benelux (Belgium, the Netherlands and Luxembourg),  Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. The initial registration period is ten years from the date of filing the application.

2. Where can I file my Community Trade Mark?

Applications for a CTM are made either directly at the Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain, at the trademark office of any of the Member States, or at the Benelux Office, at the choice of the applicant. An additional handling fee is charged for applications not filed directly at OHIM.

3. What language should be used to file a Community Trade Mark?

Two languages must be chosen. The CTM application must be filed in one of the official languages of the EU (Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Italian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Slovak, Slovene, Spanish or Swedish). In addition, it is necessary to indicate a second language, which must be one of the five official languages of OHIM (English, French, German, Italian or Spanish) for procedural purposes, including oppositions.

4. What else do I need to know to file?

Applicants domiciled in the EU may file applications directly or through their agents. Applicants domiciled outside the EU must file through an agent in any EU country. Applicants filing through an agent must provide a signed Power of Attorney. General Powers of Attorney are accepted. CTMs can be registered for goods or services and the mark must be capable of graphic representation.

Presently, searches are carried out by national offices of the EU Member States (except France, Germany and Italy) at OHIM's request to notify the applicant of any potentially conflicting prior national trademark rights. However, from March 10, 2008, searches at national offices will only be made at the request of the applicant and subject to payment of an additional fee. OHIM also conducts a search among prior CTMs and notifies the proprietors of such rights of the existence of the later application automatically (and this will remain the case after March 2008).  However, neither of these notifications has any direct bearing on a CTM application: no examination on relative grounds is carried out.

5. What can preclude a Community Trade Mark registration?

Besides the ordinary grounds for refusal of a trademark application, prior national trademark rights by the owner of a similar trademark may preclude registration of a CTM application.

The owner of an earlier national right acquired in good faith may prevent an extended CTM from being used in its territory. Existing national marks cannot be challenged on the basis of CTMs registered or applied for before accession. Likewise, the owners of CTMs are unable to prevent use of descriptive terms in accession countries.

Trademarks covered by a CTM application must possess sufficient distinctiveness to be registrable in all national jurisdictions of the EU; if a mark is not capable of registration in any one of the EU Member States, it cannot be registered as a CTM.

6. What are the advantages of using the CTM?

The most attractive feature of CTM registration is that it offers trademark protection in all 27 Member States of the EU at a cost that is much lower than that of filing separate applications in each Member State. Furthermore, use of the trademark is not required to secure registration or renewal. Also, bona fide use on a reasonable scale in a single Member State is normally sufficient to maintain the validity of the CTM registration throughout the EU, and prevent it from being vulnerable to cancellation through nonuse over a five-year period. Last, a CTM application that is refused registration may be converted into national applications maintaining the priority of the original CTM application.

7. What are the disadvantages of using the CTM?

A disadvantage of the CTM registration is that the period until receipt of registration has proven lengthy. Furthermore, an earlier registration in one Member State alone may defeat a CTM application in its entirety. Also, if applications are met with several oppositions, the costs of dealing with the oppositions may be high. The Opposition Division of OHIM may award attorneys’ fees to the other party, but these fees are awarded on a set scale and costs awards are very low.

8. What are the costs?

	Euro (€)
Filing fee for 3 classes of goods and/or services	900 (750 via e-filing)
Registration for 3 classes	850
Additional classes (per class)	150
Appealing adverse decision	800
Cancellations (application for revocation or invalidity)	700
(Fees subject to change)

9. How do the CTM and Madrid International systems overlap?

The European Union became a contracting party to the Madrid Protocol on October 1, 2004. Since that date, it has been possible to designate a CTM as part of an international trade mark application in the same way as every other contracting party.

If a CTM included in a Madrid Protocol application is refused, it is still possible to “convert” that CTM into national applications in the individual EU Member States. These designations can be either separate trade mark applications (outside of the Madrid Protocol application) or, more likely, national designations within the Madrid Protocol application.

Additional Resources

INTA's Europe Update

Office for Harmonization in the Internal Market (OHIM)