1. What Is a Community Trademark?
2. Why Is the Community Trademark Important?
3. Why Should You Get a Community Trademark?
4. What Counts as a Trademark?
5. Changes to the Community Trademark in 2016
6. How to File a Trademark Application
7. How Does the Process Go?
8. What Are Search Reports?
9. Opposing an Application
10. Licensing CTMs
11. When Shouldn't You Get a CTM?
12. Certification Marks

What Is a Community Trademark?

A Community Trademark is a registered trademark that protects your brand in every EU member state and encourages international business and branding.

The Community Trademark, also known as the Community Trade Mark (CTM), and EU Trade Mark (EUTM), is a European Union trademark registration. The Community Trademark is valid in all European Union countries. It is valid for 10 years and is renewable for 10-year periods.

The CTM divides goods and services by international standards. Your CTM may apply to one class of goods and services or several, depending on how you fill out your application.

Why Is the Community Trademark Important?

The Community Trademark simplifies the process of protecting your brand. Before the EU, you had to get a trademark in each country for which you needed one. That could sometimes require as many as 13 applications. In 1993, European Council Directive No. 4094 created the Community Trademark.

The CTM helps with international commerce, including imports and exports, and is a more cost-effective way for people who do business in the EU to protect their trademarks. A CTM lets businesses use a single trademark in multiple EU countries. That helps with brand identity and advertising.

In 1996, the Office for Harmonization in the Internal Mark, or OHIM, took its first CTM applications. CTMs don't get rid of national trademarks, so you can still get a trademark in a single EU country.

Why Should You Get a Community Trademark?

The Community Trademark lets you protect your business identity by filing a single application. This is almost always a cost-effective option for businesses, even if they don't do business in every EU country. U.S. businesses in particular benefit from CTMs. If you think your business may expand to other EU countries, the Community Trademark is a good option.

A CTM gives you the exclusive right to use a trademark.

  • Other people are not allowed to use your trademark without your permission.
  • People cannot use a similar trademark for the same or similar goods and services.
  • Your business can be from a country outside the EU.
  • Members of the World Trade Organization (WTO) and the Paris Union Convention are allowed to apply for CTMs.
  • Any time a new country enters the EU, CTMs extend to that country, too

Your CTM rights prevent others from:

  • Using your trademark on their packaging
  • Using your trademark to sell or stock their goods
  • Selling goods or services that use your trademark without your consent
  • Using your trademark in advertising or on business documents without your consent

Others can use your goods with your trademark on them if you put those goods on the market.

You should use your CTM once you have it, as it can be revoked after five years without use. You only have to use it in one EU country. You don't have to use your trademark right away, just within the five year window. It won't be revoked if you don't use it unless a third-party to challenge your trademark. Otherwise, it will stay on the register.

Keep watch for similar trademarks and for people using your trademark without permission. You must take action within five years after unauthorized use of your trademark occurs.

If you had a national trademark in an EU state, you can claim seniority of that trademark when you file for your CTM and ask for a priority registration. You then have the same rights under the CTM. You can let the national trademark expire in most cases.

Countries Where the CTM Is Valid

  • Austria
  • Belgium
  • Bulgaria
  • Croatia
  • Cyprus
  • Czech Republic
  • Denmark
  • Eire
  • Estonia
  • Finland
  • France
  • Germany
  • Greece
  • Hungary
  • Italy
  • Latvia
  • Lithuania
  • Luxembourg
  • Malta
  • Netherlands
  • Poland
  • Portugal
  • Romania
  • Slovakia
  • Slovenia
  • Spain
  • Sweden
  • UK

What Counts as a Trademark?

Trademarks have to be distinctive. The official definition is "any signs capable of being represented graphically." That can mean:

  • Words
  • Names
  • Numbers
  • Designs
  • 3D symbols
  • Letters
  • Sound marks

A mark can't be:

  • Misleading
  • Offensive in an EU member state
  • In violation of Community Trademark rights

Changes to the Community Trademark in 2016

Changes to Names

  • The name changed from Community Trade Mark. It is now European Union Trade Mark (EUTM).
  • The Office for Harmonization in the Internal Mark became the European Union Intellectual Property Office (EUIPO).
  • Note: the EUIPO does not grant patents.

Changes with Fees and Class

  • Application Fees used to be €750 to file online and €900 to file the paper form. Three classes were covered in this filing, and you had to pay €150 for an additional class.
  • Now, an application for one class is €850, and an application for two classes is €900.
  • After two classes, you pay €150 for each extra class in your application.
  • You used to be able to file under a "class heading," and all goods and services in the class applied. "Class headings" are now taken more literally.

Other Changes

  • To make room for "non-traditional marks" which include holograms and scents, you don't have to include a visual graphic of your trademark in your application.
  • Marks that are only the shape of your goods don't qualify. Marks that only rely on a characteristic of your goods also don't qualify.
  • Company names that are similar enough to trademarks to cause confusion now count as infringement on a EUTM.

These changes are the first major changes to the Community Trademark for over 10 years. The aim of the changes is to help with cost and commerce.

How to File a Trademark Application

Where You File an Application:

  • The EUIPO in Alciante, Spain
  • Any EU member state's Trademark Office

Languages

Applications for a CTM are available in the 24 EU languages. You are allowed to file your application in any of these languages, but you have to pick an Office Language for your application, too. These include: English, French, Spanish, German, and Italian. Some proceedings may be conducted in the Office Language you chose, even if you filed your application in a non-Office language. You might have to translate documents.

Do You Need a Lawyer?

Technically, no. You can file the application yourself. Because the process is complicated, many people decide to file their applications through a lawyer.

Class Headings or Specifics?

Class headings cover a broad scope. You can pick individual goods or services instead.

Pros of Class Headings:

  • You protect your trademark if your company grows
  • You cover more goods and services in your application

Cons of Class Headings

  • If your scope is broad, you might get more opposition.
  • Within five years, you need to use the trademark for all goods and services you listed in your application. Otherwise, part of your application will be revoked.

How Does the Process Go?

You have to pay the application fee a month after you file your application with the OHIM. They won't send you a bill or a reminder. If you want a receipt, you have to request one by fax to the Finance Department (+34 96 513 9113).

You only have to pay a registration fee if the OHIM decides you're allowed to have a trademark. They'll tell you when you need to pay the registration fee. Registration fee is €850, which covers three classes. You add the additional €150 for each class you add.

  • The Office examines your application for any grounds for refusal.
  • The Office searches for similar CTMs.
  • You receive the search reports, and after a month, may publish the application.
  • Within three months, oppositions to the application can be filed.
  • Your application is approved or rejected.
  • The process takes between six and eight months.

If you need to appeal an opposition or a decision, you do it at the Board of Appeals. If you don't like that decision, you can appeal to the Court of Justice.

Fast Tracked Applications

Fast Track applications take about half the time of a normal application. To get your application fast tracked, you need to:

What Are Search Reports?

When you apply for a CTM and/or a national trademark, you should search for similar trademarks. You can conduct these searches by getting search reports, which will tell you if a similar mark already exists. The similar mark might already have a CTM, or it might have a pending application. If one does, it might affect your ability to get a CTM. You can withdraw your application if you find these results.

You can do your own trademark search before filing your application.

Opposing an Application

If you want to oppose a CTM application, a single opposition filing counts in every EU state. You can file an opposition within three months of the publication of the application you want to oppose. You use one of the five Office languages. You'll need to translate your opposition if you don't use one of the languages the original applicant picked.

If someone has opposed your application and the opposition succeeds, you're allowed to convert the application. You can change it to one or more national applications in the countries where you want to use your trademark. Those applications will have the same date that your CTM application had. If you already had a national trademark for five years, that specific national application can't be opposed.

Licensing CTMs

If you want to allow someone else to use your mark, you can license it to them.

  • You record the third-party license at the EUTM.
  • The license can apply in all EU states, or can only apply in certain places.
  • The license can be non-exclusive or exclusive.
  • The third-party may pay you royalties for the license.

Unauthorized Usage

If someone uses your trademark without a license, you don't apply to the EU directly. You apply to a special court in the country where the problem happens. The member states have courts that use EU law to hear CTM cases. Keep in mind, court proceedings still happen under the laws of the country where you file the lawsuit.

When Shouldn't You Get a CTM?

  • Your business is local to one country, and will remain local
  • Your trademark application would not be approved because the trademark isn't distinctive 
  • Your trademark is offensive in another country
  • You can get an International Registration (IR) that applies in a few EU member states but not all of them
  • You need to cover countries outside of the EU with an IR. (If this is the case, you can list the EU on your IR for the same benefits as a CTM.)

Certification Marks

Beginning Sept. 24, 2017, you will be able to apply for a Certification Mark. This mark says that your product or service meets certain benchmarks.

The Community Trademark is a cost-effective way to protect international business. To begin applying for a Community Trademark, contact a trademark attorney near you. UpCounsel screens for the best attorneys who understand international CTM law and trademarks.