Thinking about European trademark protection? If so, file now in order to
take advantage of the changes that will be occurring with respect to the
composition of the European Union (EU). At present, the EU consists of 15
countries: Austria, Belgium, Denmark, Finland, France, Germany, Greece,
Ireland, Italy, Luxembourg, The Netherlands, Portugal, Spain, Sweden, United
Kingdom. As of May 1, 2004, ten more countries will become members of the EU,
namely: Estonia, Poland, Hungary, Cyprus, Latvia, Czech Republic, Slovenia,
Lithuania, Slovak Republic, Malta. Unlike other trademark protocols or
systems, the European Union has a mechanism for filing one trademark
application that covers all 15 (soon to be 25) countries. This mechanism is
known as a Community Trademark (CTM). A CTM application is filed with the
Office for Harmonization in the International Market (OHIM), located in
Alicante, Spain. The advantage of this type of application is that, if
registration issues, it will cover all of the EU countries. A potential
downside, however, is that if there is opposition in any of the EU
countries, it can prevent the CTM from maturing into registration. Even in
such case, though, it still may be possible to convert to national
applications in countries where there is no opposition, and retain the CTM
filing date.
If you plan to sell or license goods or services
in foreign countries it is always a good idea to file for protection abroad,
whether in Europe or elsewhere, as soon as is economically feasible. It is
not uncommon for a person or entity in a foreign country to become aware of
a mark used in the U.S. and to file for trademark protection in one or more
countries, including a CTM application, in order to secure the rights to the
mark in those countries. Because a party has a substantial period of time
overseas to put a mark into use (sometimes as many as five years), the
holder of the U.S. trademark will not be able to challenge the foreign
registration on the grounds that the mark is not being used until the grace
period has expired. The result in such case often is that the U.S. owner (1)
cannot use its valuable mark(s) in certain countries where it plans to do
business, or, (2) must enter into an economic arrangement with the foreign
owner that permits the U.S. owner to use its marks in the countries in
issue.
Why is
it useful to file for a CTM before May 1, 2004? The key reason is that
filing for a CTM prior to that date will prevent the CTM application from
being challenged on certain grounds as a result of the nine new languages
that will be added to the EU. The EU now has eleven official languages. The
new members will add nine new national languages to this group. Each
national language must be taken into account when examining marks for
matters such as descriptiveness or deceptiveness. Hence, if a mark is
descriptive in one of the languages of the EU, it likely will be refused CTM
registration. Applying before May 1, 2004 will avoid this result as to the
new member countries, although there are certain qualifications. First, if a
mark is descriptive in a new member country, a pre-May 1 applicant can use
it in that country, but cannot stop any other person from using the
descriptive term in that country. Second, if the mark is deceptive in the
language of one of the new member countries, the applicant cannot use the
mark in that country.
Another
benefit of filing for a CTM before May 1, 2004 is that even though the owner
of a trademark in one of the new member countries has the right to oppose a
CTM application that is filed between November 1, 2003 and May 1, 2004 on
the basis of a prior national right, if the owner does not exercise that
right, it will not be entitled to later seek cancellation of the CTM
registration. Of course, CTM applications filed after May 1, 2004 are
subject to opposition or cancellation by trademark owners in the new member
countries.
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