The European Community Trademark

The CTM registration system does not replace national trademark rights but co-exists with them. The CTM system is opposition based. Applications obtain priority by virtue of their filing date and are examined only on the basis of inherent registrability. Once a CTM application is approved, it is advertised for opposition.

Earlier priority rights on the CTM and National registries will be determining factors in an opposition proceeding. We recommend that trademark watching services such as Compu-Mark be instructed to alert owners to the advertisement of confusingly similar or even identical trademarks.

Opposition and infringement proceedings are conducted at a local level and provide for the award of set costs. An opposition in one CTM jurisdiction will stop the progression of the CTM application throughout the European Union until that opposition is resolved. If an opposition is successfully in one CTM country, the CTM application is lost in all 25 countries. However, a rejected CTM application can be converted into a series of National applications which bear the same priority date.

A CTM registration is effective for 10 years from its filing date and is renewable for subsequent terms of 10 years thereafter. No proof of use is required to obtain renewal.


Disadvantages of Filing a CTM Application

• The opposition based nature of the CTM registration means that there is a likelihood that some CTM applicants may face numerous oppositions to registration.
• The costs of oppositions could be significant, especially in view of the fact that a losing party in a CTM opposition may have to pay some of the fees and disbursements of the other party.
• The CTM registration can only be granted for all countries as a whole. Therefore, the existence of grounds for refusal in one country will trigger the application to collapse in all other countries as well.

• The CTM registration gives a uniform right in the European Union and requires use of the mark in only one country to retain protection for the mark throughout the European Union.
• The CTM system may provide faster registration than National applications in traditionally slow countries such as Greece.
• Protection in a member state of the European Union will now be available for marks previously deemed unregistrable on some National registers because of strict examination procedures.
• A trademark owner could potentially achieve significant cost savings over the current practice of filing separate applications for each country of the European Union, instructing many different trademark attorneys, and renewing and maintaining registrations in 25 countries.
• The CTM system is not reserved to nationals and companies of member States, but is also very widely available to all nationals and companies of any State whatsoever which is a party to the Paris Convention or to the World Trade Organisation and even any other State as long as this State grants reciprocal rights to nationals of the European Union.

If an applicant's home country is a party to the Madrid Agreement and/or the Madrid Protocol the applicant should consider filing a national (basic) registration in his home country simultaneously with the CTM application. The basic registration enables the applicant to file an International Registration according to the Madrid Agreement and/or the Madrid Protocol in more than 70 countries with a single application.

In the event that the CTM application is being contested the applicant then has a much better position for negotiations with the opponent because he can threat to file an International Registration without delay in addition to the CTM application. In contrast to the CTM system where only one successful opposition will trigger a CTM application to collapse, oppositions to an International Registration must be instituted on a country-by-country basis. Some opponents have a tendency to avoid the costs involved therewith and prefer to conclude a prior rights agreement instead. A basic home registration may therefore be a helpful tool in the defence of a CTM application.

For more information on CTM registrations please proceed to the Homepage of the Office for Harmonization in the Internal Market (OHIM).



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