UK: The Community Trade Mark And The EU

Last Updated: 17 May 1996
Good news for all those companies who conduct or are interested in conducting business in Europe - it is now possible to obtain trade mark protection covering the whole of the European Union through one single application.

Through the Community Trade marks Office (which opened its doors on 1 January 1996), companies can apply for a registered trade mark which, if registration is obtained, will give the owner the exclusive right to use the trade mark in every member state of the EU for goods specified. The Community Trademarks Office is currently accepting applications with the earliest filing date being 1 April 1996.

Nationals of almost every country will be able to apply for a community trade mark by virtue of their country having signed various international trade mark treaties and all applicants possess equal status. However, non EU nationals will need to obtain representation in the EU. Please note that competitors or other EU companies may utilise this procedure to obtain a community trade mark registration that will be effective in the UK even if not used here.

There are a number of important benefits of obtaining a community trade mark:


Only one application is necessary

Previously, to obtain protection in each member state of the EU, it was necessary to file an application through each local trade mark office in the appropriate language following formalities specific to that locality. Through the Community Trade Mark Office, one application covers every member state. This in turn creates the following benefits:

  • Filing the application in any one of the 11 EU languages will be acceptable but note that the Community Trade Mark Office will correspond only in one of the five official EU languages - English, Spanish, French, German or Italian.
  • There will be advantages of cost and time in having to monitor and process only a single application using one set of procedural formalities.
  • Once the application proceeds to registration then again time and money will be saved in maintaining only one registration.

The trade mark need only be used in one territory to maintain registration.

Using a national system of registration, the owner must "use" the trade mark in each country of registration to ensure its ongoing validity. Use of the trade mark in only one member state of the EU is all that is necessary to maintain the validity of a community trade mark.

Registry fees may be less expensive.

Where a trade mark owner would otherwise be registering and maintaining more than four national registrations it is likely to be cheaper (at least on the present fee structure) to register and maintain only the one community trade mark. Please contact one of the people mentioned for more detailed information as to costs.

Points to bear in mind.

An application for a community trade mark will be defeated by a valid objection from a registered trade mark owner in any one member state. If that objection cannot be overcome by consents (which the Community Trade Marks Office will assist in facilitating) or other arrangements between the parties, then the applicant will not be able to proceed. The applicant can fall back on the option of converting its community application into separate country registrations for the payment of an additional fee (currently set at 200 ECU per national registration). The applicant would also have to meet the costs of any successful opposition.

An owner will not be able to split its rights by, for instance, assigning the trade mark in France to another but retaining registration for the remainder of the member states. To do that, the owner would first have to convert the community trade mark back into national registrations and then assign the national registration.

Another Useful Development - The Madrid Protocol

The United Kingdom has recently become a signatory to the Madrid Protocol, which is an international system of trade mark registration whereby the owner of a trade mark in one country can specify other countries for protection, provided those countries are also signatories

Applicants will be able to apply through the UK Trade Marks Registry nominating other countries in which registration is sought as from 1 April 1996. There are some uncertainties as to how the procedure will work in practice at the moment, but there are likely to be cost savings because the necessity for instructing local trade mark agents may be avoided.

Provided that a substantial number of countries (including EU countries) ratify the Protocol, for hose doing business within the EU, this may well prove an attractive alternative to applying for a Community Trade mark. The primary advantage of the Madrid Protocol over the Community Trade mark procedure will be that if a registration is attacked in one country this will not invalidate registrations in other countries. In addition, owners will be able to assign freely international registrations in specific countries. However, the Community Trade mark does have the dual advantages of requiring use in only one EU member state to protect the registration and is subject to a uniform community legal system rather than the idiosyncrasies of the laws of individual member states.

In Summary

Whilst it is still early days, it is hoped that the two new international systems will complement each other and the existing national systems and provide trade mark owners with a variety of attractive options.

Key Points

A trade mark covering the whole of the European Union will be obtainable from 1 April 1996.

Important potential advantages include:

  • -cost savings
  • -reduction in administration
  • -use in only one EU country will be sufficient to maintain validity.

Community trade mark registration could prevent use of a trade mark in the UK. This is important to bear in mind when considering competitors.

This article is correct to the best of our knowledge and belief at the time of going to press. It is however, written as a general guide, so it is recommended that specific professional advice is sought before any action is taken.

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