Foreign Trade Marks

As with Most countries the filing procedures require: identification of the Applicant for registration, the mark to be applied for, the goods or services for which registration is sought, and the class or classes (according to the International Classification System) into which those goods or services fall. A European Community trade mark (CTM) application is a way of covering all of the European Union (EU) states. A single application may cover a number of classes of goods or services.

The Application is filed in Alicante. Once filed, a CTM application is examined, and, provided that it is considered to be sufficiently distinctive in all EU states, the mark is advertised. The process also involves a search of prior CTMs, the results of which are sent to the Applicant. However, the CTM office will not prevent the application proceeding on grounds of existing trade mark registrations. The owners of the CTMs identified by the search are notified of the advertisement of the mark for opposition purposes. In some countries (including the United Kingdom), national offices search for any prior national marks which could lead to an objection.  

Between filing and registration, difficulties which may arise include objections against the nature of the mark or oppositions by third parties based on existing rights. We can provide estimates of our charges for seeking to overcome those difficulties if necessary.  

National offices do not notify owners of prior marks of the advertisement. In the absence of opposition by third parties, the mark is registered in all EU states.  

If the mark is refused because of an objection that is applicable in one or more of the EU states, the applicant has the option of converting the CTM application into separate national applications in one or more of the states of the EU. The relevant national trade mark office or offices will then examine the application.  

The CTM registration may be entitled to claim seniority (i.e., the date and all other rights) from existing registrations in any EU state which may result in a saving of renewal fees on the existing registrations. Further advice should be sought on this point before any national registrations are allowed to lapse.  

A single Renewal fee is payable every 10 years.   The main drawback of the CTM is the unitary nature: if it fails in one EU state, it fails in its entirety. However, it offers cost advantages on filing, infringement and maintenance. An example of this is that use of the mark in one EU state is likely to maintain the registration in all EU states.

Other matters

In most countries registered marks which have not been used by the proprietor within a specified period are vulnerable to attack by third parties who may request that the registration be struck off the register.  

The costs of filing CTM Applications is calculated from disbursements (e.g., Official fees, draughtsman's charges, telephone, copying, fax and travel costs), service charges (a flat rate administrative charge specific to the particular job done and covering mainly clerical matters) and a charge for the professional time spent on the matter. With regard to the latter, this is calculated by recording all time spent (whether on the telephone, in meetings, preparing documents or otherwise dealing with your file). Thus, most of our charges can only be estimated as they depend largely on the time spent. You can help to keep the professional time element of the bill to a minimum by, for example, by remembering that time spent in personal meetings and on the telephone will all be charged.

For further information please use our Information Request Form