The Community Trademark
Application is processed in the Interior Market Harmonising Office located
in Alicante (SPAIN) or in any given Office of Patents and Trademarks of
Member Countries, and does not require the existence of a base trademark
in the country of origin and capable of being applied for by any physical
or juridical person established in the Member States or in those countries
that form part of Union Convention of Paris. The Community Trademark grants
the protection in the following countries:
 |
Germany Austria France Italy Spain Portugal Greece United Kingdom Ireland Denmark Netherlands Belgium Luxembourg Sweden Finland Estonia Hungary Latvia Lithuania Malta Poland Slovak Republic Slovenia Bulgaria and Romania. |
The Community trademarks are granted
for a period of 10 years, renewable indefinitely for equal periods and
are granted for all Member States, allowing for the same rights as the
national trademark in each country and at a very reasonable, proportional
cost.
Guidelines concerning proceedings before
the Office for Harmonization in the Internal Market (Trade Marks and Designs)
GENERAL INTRODUCTION
1) OBJECTIVE
OF THE GUIDELINES
The purpose of these Guidelines is to
indicate the practice of the Office with regard to the Regulation on the
Community trade mark. They have been drafted with a view to practical use
both by the Office personnel in charge of the various procedures and the
professionals concerned therewith.
They have been drawn up to cover
the majority of current cases, and consequently can be regarded only as
general instructions. These Guidelines are not, therefore, legislative
texts. The parties, and the Office, must where necessary refer to Regulation
No 40/94 on the Community trade mark, the Regulation implementing that
Regulation, the Regulation on fees and the Regulation for proceedings before
the Boards of Appeal and, finally, the interpretation of these texts handed
down by the Boards of Appeal and the Court of Justice of the European Communities,
including the Court of First Instance of the European Communities.
Moreover, the Office and practitioners
must accept the idea that a natural learning period is needed for these
procedures to be established. These Guidelines cannot, therefore, be exhaustive
as of now and will unquestionably have to evolve and be adapted in accordance
with practice and with the new requirements that arise from the experience
gained.
2) SUBJECT MATTER OF THE PROCEEDINGS
Council Regulation No 40/94 of 20 December
1993 has established, in parallel with the national systems, a Community
trade mark system intended to eliminate one of the main obstacles to the
development of the single European market.
Up to that time the law governing
the registration and use of trade marks was exclusively national and made
it difficult for the same trade mark to be used throughout the European
Community.
In future, these marks will be able
to enjoy uniform protection, have effect throughout the Community and be
governed by a single Community law which is directly applicable in all
the Member States.
The OHIM: Office for Harmonization
in the Internal Market (Trade Marks and Designs), established in Alicante,
is therefore responsible for granting official Community industrial property
rights. To this end, it applies the registration procedures, maintains
the public registers of these rights and, primarily, rules on applications
for declaration of invalidity of these rights after their registration.
In order to perform these tasks,
the Office has units which are competent to make individual decisions,
specifically: examiners, responsible for the examination of the application
up to registration of the Community trade mark; opposition divisions, responsible
for opposition proceedings against applications for registration; invalidity
divisions, responsible for handling applications for revocation or invalidity
of a Community trade mark; and a division responsible for the administration
of trade marks and legal matters.
3) SUMMARY OF THE PROCEDURE FOR
EXAMINATION OF AN APPLICATION FOR REGISTRATION OF A COMMUNITY TRADE MARK
The registration procedure as such relates
to the examination of applications from the standpoint of formalities and
absolute grounds for refusal of registration.
Schematically, this procedure for
the examination of an application for registration can be summarized as
comprising the following seven stages:
-
Filing of the application,
-
Preliminary examination and according
a date of filing,
-
Examination of the other formalities
(fees, classification, priority, seniority, etc.),
-
Search for earlier trade marks,
-
Examination of absolute grounds for
refusal,
-
Publication of the application,
-
Granting of the right and registration
in the Register of Community Trade Marks.
4) SUMMARY OF THE OPPOSITION PROCEDURE
The opposition procedure, which can
be initiated only by a party who is the proprietor of an earlier trade
mark, relates to the examination of the relative grounds for refusal of
registration.
Schematically, it comprises 5 stages:
-
Filing of the notice of opposition,
-
Examination of the admissibility of
the notice of opposition,
-
Notification of the opposition to the
applicant and opening of proceedings,
-
Examination of the case, hearing evidence
from both parties as to the relative grounds for refusal,
-
Decision.
5) SUMMARY OF THE PROCEDURE FOR APPLICATIONS
FOR REVOCATION OR INVALIDITY
The revocation or invalidity procedure,
which can be initiated only by a party basing his case on absolute grounds,
or on relative grounds for invalidity, is effective only against a registered
Community trade mark.
In summary, this procedure comprises
the following 5 stages:
-
Filing of the application,
-
Examination of the admissibility of
the application for revocation or invalidity,
-
Notification of the proprietor of the
Community trade mark and invitation to file observations (as often as necessary),
-
Examination of the case, hearing evidence
from both parties as to the absolute or relative grounds for refusal,
-
Decision.
6) SUMMARY OF OTHER PROCEEDINGS BEFORE
THE OFFICE
These proceedings relate either to applications
for registration or to registered trade marks.
