Trade Marks

Community Trade Mark

Jane Lambert
Last updated 23 April 2006

This case note previously appeared on the NIPCLAW website

A Community trade mark ("CTM") is a trade mark for goods or services that is registered in accordance with the conditions of the Community Trade Mark Regulation (Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark) (art. 1 (1)) of the CTM Regulation). A CTM has unitary character with equal effect throughout the EC. It may not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor may its use be prohibited, save in respect of the whole EC (art. 1 (2)).

Community Trade Mark Regulation
The regulation is divided into 13 titles some of which are subdivided into sections as follows:

	Title I - General Provisions: Definition and description of a CTM and establishment of the Office for Harmonization in the Internal Market (trade marks and designs) ("OHIM");
	Title II - The Law Relating to Trade Marks: signs of which a CTM may consist, means by which a CTM may be obtained, absolute and relative grounds of refusal, effects of a CTM (rights conferred by registration, limitation, exhaustion of rights and complementary application of national law relating to infringement), use of CTMs, CTMs as objects of property (transfer and licensing);
	Title III - Applications for CTMs: filing, priority including exhibition priority and seniority of national marks;
	Title IV - Registration Procedure: examination of applications, search, publication, observations by third parties, opposition, withdrawal, restriction and amendment and registration;
	Title V - Duration, Renewal and Alteration;
	Title VI - Surrender, Revocation and Invalidity;
	Title VII- Appeals;
	Title VIII - Community Collective Marks;
	Title IX - Procedure: requirement to give reasons for decision, powers to examine, oral proceedings, evidence, costs, the register and representation;
	Title X - Jurisdiction and Procedure in Legal Actions relating to CTMs: application of the Brussels Convention, Community trade mark courts and jurisdiction of national courts;
	Title XI - Effects on the Laws of Member States: proceedings in national and Community trade mark courts in respect of the same mark, preserving earlier trade marks and earlier rights and conversion of CTM applications into national applications;
	Title XII - OHIM: legal status, staff, languages, management of the office, administrative board, implementation of procedures, budgetary control; and
	Title XIII - International Registration of Marks: new provisions implementing EC's accession to the Madrid Protocol;
	Title XIV - Final Provisions: implementation provisions, designation of origin legislation, entry into force and establishment of OHIM at Alicante.

Implementing Regulations
Art. 140 (1) of the CTM Regulation provides for rules to implement its provisions to be adopted in an implementing regulation. Pursuant to that article, the Commission adopted Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark ("the Implementing Regulation") which contains rules for applications, opposition, registration, renewal, transfer, surrender, revocation and invalidity, Community collective marks, conversion of applications, appeals and general provisions. The Commission has also adopted Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) ("the Fees Regulation") and Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) ("the Boards of Appeal Rules of Procedure").

National Implementation
S.51 of the Trade Marks Act 1994 ("TMA") defines the terms "Community trade mark" and "Community Trade Mark Regulation". S.52 enables the Secretary of State to make regulations providing for the CTM in the UK. Pursuant to that section, he has made the Community Trade Mark Regulations (SI 2006 No. 1027"the CTM Regulations"). These provide for declarations of invalidity in respect of marks that have been surrendered or removed from the UK register in respect of claims of seniority of registered marks, threats actions in respect of CTMs, the extension of various other provisions of the Trade Marks Act 1994 to CTMs, the designation of the High Court and other courts in Scotland and Northern Ireland as Community Trade Mark Courts and the conversion of CTM applications into applications for registration under the TMA subject to the Trade Mark Rules 2000.

Representation
Save for natural or legal persons not having their domicil or principal place of business or a real and effective industrial or commercial establishment in the EC who must be represented by a lawyer who has qualified in an EC member state or other professional representative, there is no requirement to be represented in OHIM (art. 88 (1) CTM Regulation). However, the procedure is complex and those who are not familiar with it should consult a chartered patent agent or trade mark attorney whose name appears on the list maintained by OHIM. The websites of the Chartered Institute of Patent Agents and Institute of Trade Mark Attorneys list their members by location.

Guidance on Applications to register CTMs
General guidance on the CTM is available from "Practical Aspects" page of OHIM's website. These include FAQ, guidance on electronic filing of applications ("e-filing"), forms and explanatory notes in the various languages used at OHIM and various detailed guidelines. Essentially, the procedure is similar but not identical to the procedure in national trade mark registries. Applications may be made either directly to OHIM or through a national patent office. The UK Patent Office charges a £15 handling fee for applications made to it. OHIM has now begun to accept electronic filings. As in the national procedure, applications are examined for compliance with the CTM and regulations. If they are in order they are published giving opportunities for others to oppose the application or make representations. Oppositions are examined by an Opposition Division within OHIM and if upheld an application may be refused. An appeal from the Opposition Division lie to the Board of Appeal. Decisions of the Boards of Appeal may be challenged before the Court of Justice. Should there be no opposition, or should the opposition be resolved in favour of the applicant the mark is registered in accordance with art. 45 of the CTM Regulation.

Duration and Renewal
A CTM is registered for 10 years from the date of filing of the application (art. 46). It may be renewed for further periods of 10 years under art. 47.

Effect of Registration of a CTM
These are essentially the same as the effect of registration of a sign under the TMA in the UK. Art. 9 (1) of the CTM Regulation provides that a CTM shall confer on the proprietor exclusive rights to prevent all third parties not having his consent from using in the course of trade:

1. any sign which is identical with the CTM in relation to goods or services which are identical with those for which the CTM is registered;

2. any sign where, because of its identity with or similarity to the CTM and the identity or similarity of the goods or services covered by the CTM and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the CTM;

3. any sign which is identical with or similar to the CTM in relation to goods or services which are not similar to those for which the CTM is registered, where the latter has a reputation in the EC and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the CTM.

Art. 9 (2) expressly prohibits among other things affixing an infringing signs sign to goods or to their packaging, offering such goods, putting them on the market or stocking them for these purposes under such sign, offering or supplying services under an infringing sign, importing or exporting goods under that sign or using such sign on business papers and in advertising. These rights prevail against third parties from the date of publication of registration of the CTM. Reasonable compensation may, however, be claimed for infringements from the date of publication of a CTM application. However, a court may not decide upon the merits of a case until after publication of the registration (art. 9 (3)).

Infringement Proceedings
An action for infringement of a CTM must be brought in a Community Trade Mark Court. The Community Trade Mark Court for England and Wales is the Chancery Division of the High Court. An example of a CTM claim that came before that court is Pfizer Ltd. and another v Eurofood Link (UK) Ltd.(10 Dec 1999).

Removal from the Register
Like a national mark, a CTM may be surrendered, revoked or declared invalid. As under the TMA safeguards are provided to protect licensees and others with rights under a CTM in the event of surrender (art. 49 CTM Regulation). The grounds of revocation under art. 50 of the CTM Regulation are substantially the same as under s.46 (1) TMA. Similarly, a CTM may be declared invalid under art. 51 or art. 52 for substantially the same reasons as under s.47 TMA. An application for a declaration of invalidity may be made either to OHIM or in a counterclaim in infringement proceedings before a CTM court.

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