Community Trade Marks and Designs
Since 1996, the Office for Harmonization in the Internal Market (OHIM), located in Alicante, Spain, has been accepting applications for the registration of Community trade marks (CTM). Since April 1, 2003, Community designs (CD) can also be registered with OHIM. To be eligible for Community Design protection, the design must be new and must have an individual character.
Given the unitary character of the European Union (EU), both CTM and CD registrations have effect throughout the territories of each member states of the EU. Currently, the member states include Austria, Belgium, Denmark, Finland, France, Germany, Greece, Republic of Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden and the United Kingdom.
The procedure for securing a registration is relatively fast and simple, and more economical than seeking protection on a country-by-country basis. A CTM registration is valid for 10 years, and can be renewed indefinitely every 10 years. A CD registration is valid for 5 years and is renewable every five years up to a maximum of 25 years.
Enlargement of the European Union
As of May 1, 2004, Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, the Slovak Republic and Slovenia (the "new Member States") will join the EU. As a result, all CTMs and CDs registered, filed before or claiming priority before May 1, 2004 will automatically be extended to the territory of the new Member States. The automatic extension will take place without any additional fee, without any specific request and without any formalities.
Owners of prior national rights in the new Member States will not be able to cancel or invalidate CTM or CD registrations that have been automatically extended, unless there is a claim based on valid local rights, and only in certain limited situations. However, with respect to CTMs, owners of prior rights in the new Member States will be able to oppose CTM applications that are filed within or claim a priority date within 6 months from the accession date of May 1, 2004, i.e. November 1, 2003. Competitors or rogues could therefore file applications in the new Member States within the next month and make a claim prior right against your CTM application. Accordingly, it would be prudent to ensure that your trade mark is currently protected in the new Member States as well.
Comments
If you plan to apply for a CTM registration, there are benefits of filing before November 1, 2003. Not only will your CTM application be automatically extended to the new Member States, it will also be protected against oppositions based on prior rights in the new Member States. If you are considering applying for a CD registration, an application should be filed prior to the accession date of May 1, 2004 to benefit from the automatic extension of the application to the new Member States.
Contact Information
For more information about Community trade marks and designs, please contact Brigitte Chan at (416) 957-1625 or at bchan@bereskinparr.com.
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