Zambas Law Firm provides a full range of legal services in relation to trademarks, trade names and patents. The Firm’s wide range of services includes, amongst other, registration of trademarks, Community trademarks, trade names and patents both in Cyprus as well as in the European Union and legal actions regarding infringement of intellectual property rights.
Importance of Community Trade Mark
In the modern business world registered trademarks are a must have for any business or firm that wishes to stand-out from the crowd. Over the years community trade mark has become the most important tool used to establish a good reputation and indicate the origin of the products or services. The European integration urged the need for uniform protection in all Member States and the Community Trade Mark constitutes the most simple, cost-effective and popular choice.
What is a Community Trade Mark
The Community Trade Mark is a trade mark which is valid in European Union as a whole. As any other trademark, the Community Trade Mark is a sign which is used to distinguish the goods and products of the proprietor of the sign from those of their competitors. In other words, it serves as a badge of origin. Additionally, it confers on its registered owner the exclusive right to use the trade mark in the 27 Member States and prevents third parties from any unauthorised use of the sign without consent in the course of trade.
Advantages of a Community Trade Mark
The most important advantage of Community Trade Mark compared to the national trademarks or international trade marks under the Madrid System is that it requires only a single registration procedure for the trade mark to be valid across the entire EU and the initial cost of filing the application is quite low, whereas national registration offers protection only in the country of registration (and registration to every Member State is time-consuming and costly) and international registration under the Madrid System offers protection only in the countries which are parties to the system. This single registration procedure is quite attractive as it requires only a single application for goods as well as for services, even of different classes, in a single language and it takes place in a single administrative center. Additionally, The Community Trade Mark will be also automatically valid in any other future Members of the EU.
The Community Trade Mark needs to be registered with the Office for Harmonization in the Internal Market (Trade Marks and Designs), in accordance with the Community Trade Mark Regulations. It is valid for 10 years and can be renewed indefinitely. It is important to notice that the principle of coexistence applies which means that the Community Trade Mark operates in parallel to the national trademark instead of replacing it.
Rights of the proprietor (owner) after registration
The proprietor is entitled to prohibit all third parties from using in the course of trade:
- any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
- any sign for which there exists a likelihood of confusion on the part of the public in relation to another trade mark;
- any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, if the sign is used to exploit the reputation or distinctive character of the trade mark.
What can be registered as a Community Trade Mark
Any sign capable of being represented graphically can be registered as a Community Trade Mark provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Who can be the registered as the proprietor of a Community Trade Mark
Any natural or legal person, including authorities established under public law, which are either:
- nationals of the EU , or
- nationals of states party to the Paris Convention or the World Trade Organisation or
- nationals of States which are not parties to the Paris Convention who are domiciled or have their seat or real and effective industrial/commercial establishment within Paris Convention territories or within the territory of the EU or
- nationals of states, which accord to nationals of all the Member States the same protection for trademarks, as they accord to their own nationals and that recognize the registration of Community trademarks as proof of registration of a trade mark in the country of origin, if nationals of the Member States are required to deliver such proof.
As already mentioned, Community Trade Marks need to be registered at the OHIM in order to be valid. The procedure has three stages:
- filing of an application and subsequent examination of formalities and absolute grounds for refusal,
- publication of the application and possible opposition proceedings, and
- registration and publication thereof.
The application can be filed either directly at the OHIM or at the national patent and trade mark offices of the EU Member States in one of the official languages.
The application must contain:
- a request for the registration of a Community trade mark,
- information identifying the applicant,
- a list of goods and/or services,
- a representation of the trade mark.
An application fee must be paid.
Grounds for refusal of registration
Registration is refused, in particular, in the case of:
- signs which are not suitable to serve as Community trade marks;
- trade marks which are devoid of any distinctive character;
- trade marks consisting of signs or indications that have become customary in current parlance or commercial practice;
- trade marks which are contrary to public policy or to accepted principles of morality;
- trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
Surrender, revocation and invalidity
A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. On application to the Office and after examination, the rights of the proprietor of a Community trade mark may be declared revoked if:
- within a continuous period of five years, the trade mark has not been put to genuine use in the Community and there are no proper reasons for non-use;
- in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered;
- the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services;
- the proprietor of the trade mark no longer satisfies the conditions of entitlement applicable to proprietors of a Community trade mark.