Type: Law Bulletins
Date: 04/16/2012

CTM: Affordable Trademark Protection Throughout Europe

Businesses expanding into Europe have historically been forced to face the difficulty and expense associated with securing national trademark registrations in each country in which they intend to operate.  The Community Trademark (CTM) system was established to streamline this complex multi-national process by creating a single registration that provides protection in all 27 European Union member states.

Administered by the Office of Harmonization in the Internal Market (OHIM), the CTM system provides a simple and cost effective alternative to traditional national registrations.  Similar to U.S. federal trademark registrations, CTM registrations last for ten years and may be renewed indefinitely every ten years, so long as the mark remains in genuine use.  Importantly, CTM registrations can co-exist with any antecedent European national registrations owned by the same entity.

CTM registrations should play a pivotal roll in a brand’s strategic planning, because the European Union operates under a First-to-File trademark system whereby rights in a mark are generally acquired through registration and derive from the date of registration rather than the date of first use of that mark.  This means that a brand generally has no trademark rights in most European nations until the date their mark is registered in that specific nation.  One of the chief benefits of the CTM system is that once a mark is registered, the mark is instantly afforded protection throughout the entire European Union.  Unlike national registrations that require actual use of the mark in each individual country, CTM registrations provide protection throughout all of Europe.  This protection is predicated on genuine use in any single member state.  CTM registrations may also serve as the basis for an international registration under the Madrid Protocol.  These advantages make the CTM particularly suitable for businesses that aspire to grow in to new European markets.

Growing companies must also be cost conscious.  Prosecution of a CTM application generally costs the equivalent of three national applications but covers all twenty-seven members of the European Union.  Moreover, an infringement action based on a CTM registration is enforceable in the courts of any country in the European Union.  This provides CTM registrants with the comfort of knowing that if their mark is ever infringed in Europe, they will only have to litigate once, rather than in every European country where infringement takes place.  These benefits make the CTM registration one of the best bargains in brand protection.

CTM registrations have become invaluable tools for businesses contemplating international expansion. The low cost and wide breadth of protection associated with CTM registrations make them ideal for forward thinking companies looking to expand.  Please contact any member of Taft’s Intellectual Property Practice Group to discuss how a CTM may fit into your brand’s intellectual property protection strategy.

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