Concept and legal basis of the Community trademark
Die Community trademark (now: European Union trademark) was, until the adoption of Regulation (EU) 2017/1001 on the European Union and its trademarks, a central instrument of European trademark law. With the entry into force of this regulation on October 1, 2017, the term ‘Community trademark’ was replaced by the term ‘European Union trademark.’ Nevertheless, the Community trademark remains of historical and legal significance for the development of the European trademark system.
Definition of the Community trademark
The Community trademark made it possible to obtain trademark protection for all member states of the European Union with a single application. As a result, the protective effect extended uniformly across all EU countries, regardless of their number.
Legal basis
The legal basis of the Community trademark was Regulation (EC) No. 207/2009 on the Community trademark (Community Trademark Regulation – CTMR). As of March 23, 2016, this regulation was replaced by Regulation (EU) 2017/1001 on the European Union trademark. Up to that point, the Community Trademark Regulation governed all essential aspects, including application, scope of protection, rights, and enforcement.
Transitional provisions
Applications and registered trademarks before March 23, 2016, remained protected under the old regulations but were subject to adjustments brought by the new provisions of the European Union Trademark Regulation.
Protectability and scope of protection
Registrability
A Community trademark had to meet certain substantive requirements to be eligible for registration. In particular, these included:
- Distinctiveness: The trademark had to be capable of distinguishing the goods or services of one enterprise from those of other enterprises.
- No absolute grounds for refusal: For example, the trademark could not contain descriptive indications or violate public order.
- No relative grounds for refusal: The trademark could not conflict with earlier trademark rights or infringe the rights of third parties.
Scope of protection
The Community trademark granted the holder an exclusive right to use the mark for the registered goods and services throughout the entire European Economic Area. Protection was designed to be uniform: a deficiency or conflicting right in one country could be grounds for refusal of the trademark in all member states (the so-called principle of unity).
Rights of the trademark owner
The essential rights included in particular:
- Right to prohibit: The right to prohibit third parties from using identical or similar signs for identical or similar goods/services, provided there is a likelihood of confusion.
- Licensing: The holder could grant usage rights to others.
- Assignment: The Community trademark could be assigned and pledged.
Application and registration procedure
Competent authority
The authority responsible for the registration of a Community trademark was the European Union Intellectual Property Office (EUIPO) (formerly: Office for Harmonization in the Internal Market, OHIM).
Procedure
The registration process was divided into different phases:
- Filing the application: This process required the submission of a representation of the trademark, a list of goods and services according to the Nice Classification, as well as personal details of the applicant.
- Examination of formalities and grounds for refusal: The office examined both formal requirements and absolute grounds for refusal.
- Publication: After a positive examination, the application was published so that third parties could file opposition based on prior rights within a certain period (usually three months).
- Decision and registration: After the opposition period expired, registration in the Community Trademark Register took place.
Duration and renewal
The protection period of the Community trademark was ten years from the application date and could be renewed for further periods of ten years indefinitely.
Rights and obligations arising from the Community trademark
Rights of the holder
The holder could prohibit third parties from using the protected sign or a similar sign for identical or similar goods and services. In certain cases, there was also protection against exploitation or impairment of the distinctiveness or reputation of a well-known Community trademark.
Obligations of the holder
- Use requirement: The Community trademark had to be put to genuine use within the European Union within the relevant period following registration. If not, deletion could be applied for.
- Cross-border effect: The rights applied uniformly in all member states. Non-use in a single member state did not automatically result in the loss of all protection; however, genuine use in a substantial part of the EU was required.
Enforcement and defense of the Community trademark
Infringement proceedings
In the event of trademark infringement, the holder was entitled to various claims, including injunctive relief, information, damages, and destruction. The EU trademark courts in the member states were particularly responsible.
Cancellation and invalidity
A registered Community trademark could be cancelled upon request if:
- grounds for refusal became known after registration,
- there was an infringement of earlier rights,
- the trademark was not genuinely used (revocation),
- the trademark became a generic term, or
- the trademark was misleading.
The procedure for a declaration of invalidity or revocation could be initiated before both the EUIPO and the relevant courts.
Relationship to national trademarks and international registration
Parallel trademark rights
The Community trademark (now: EU trademark) exists independently alongside national trademark rights and the possibility of international trademark registration under the Madrid Agreement and the Protocol to the Madrid Agreement.
Conflict and coexistence
In the event of a conflict of trademark rights, such as between a national and a Community trademark, special rules apply. National trademarks with earlier rights could serve as grounds for opposition or invalidity against a later Community trademark.
Transition to the European Union trademark
Through the European Union Trademark Regulation, the Community trademark was transformed into the European Union trademark as of March 23, 2016. Existing Community trademarks were automatically continued as EU trademarks. The protective effects, rights, and obligations remained largely identical but were partially modernized and updated.
Literature and further information
- Regulation (EC) No. 207/2009 on the Community trademark
- Regulation (EU) 2017/1001 on the European Union trademark
- Nice Classification of goods and services for trademarks
- European Union Intellectual Property Office (EUIPO): www.euipo.europa.eu
Note: The following developments concern the European Union trademark. From a legal-historical perspective, however, the Community trademark remains decisive for the development of a unified European trademark protection system.
Frequently Asked Questions
What legal advantages does the registration of a Community trademark offer over national trademarks?
By registering a Community trademark, officially referred to as a European Union trademark, the holder is granted uniform legal protection in all member states of the European Union with only one trademark application. This means that the trademark is enforceable EU-wide and the proprietor obtains protection rights in all EU states through a single procedure. This results in procedural advantages, as trademark infringements can be centrally pursued before the European Union Intellectual Property Office (EUIPO) or specialized EU courts. Furthermore, a successful opposition or action is sufficient to assert rights in all member states. The maintenance of the register and defense against attacks on the trademark are also centralized, making the process more effective and cost-efficient. In addition, the European Union trademark is subject to uniform substantive trademark law, so the requirements for protection, cancellation, or infringement are identical in all EU states.
What legal requirements must be observed when applying for a Community trademark?
The application for a Community trademark requires compliance with certain formal and substantive requirements. Of particular legal relevance is that the trademark must have distinctive character (§ 7 EUTMR – European Union Trademark Regulation) and may not consist exclusively of signs or indications that are used in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods/services (§ 7(1)(c) EUTMR). In addition, there must be no absolute ground for refusal under Art. 7 EUTMR, such as immoral design or a violation of public policy. The trademark must also be capable of being represented graphically and must not infringe any prior, identical or similar trademark in order not to be refused already during the application process. When applying, the classes of goods and services to be protected must be specified according to the Nice Classification. Formal requirements mainly concern the proper identification of the trademark owner and submission of all necessary documents within the prescribed deadlines.
How are rights resulting from a Community trademark enforced in the event of an infringement?
In the event of trademark infringement, the holder of a Community trademark may assert his rights both at national and at European level. The so-called Community trademark courts in each EU member state have jurisdiction, particularly for claims for injunctive relief, damages, and destruction. A judgment issued has, in principle, effect throughout the territory of the European Union unless the infringement is clearly limited to a specific territory. Furthermore, the holder may assert claims for injunctive relief and cancellation directly before the competent EUIPO. For border seizures under the EU Border Measures Regulation, the trademark can be registered with the relevant customs authorities to prevent the import or export of counterfeit goods.
What legal risks exist when applying for a Community trademark?
A significant risk when applying for a Community trademark is that a ground for refusal or a prior right in a single member state can lead to the entire application being refused or the trademark being declared invalid throughout the EU (the so-called principle of unity). Consequently, comprehensive searches and examinations of potential conflicting trademarks in all member states are necessary. Furthermore, third parties may file opposition against the registration within three months. If a Community trademark is invalidated, the rights can no longer be secured individually in the respective countries, except by subsequent conversion to national applications (the so-called ‘conversion procedure’).
How long does legal protection of a Community trademark last and how can it be renewed?
Legal protection of a registered Community trademark initially lasts for ten years from the date of application. By submitting a timely request and paying the relevant renewal fees, the protection can be extended for further ten-year periods as often as desired. Renewal is only possible for the classes of goods and services entered in the trademark register. All protective rights remain in force provided the trademark has been put to genuine use within the EU during the five-year grace period. Non-use for more than five years can be grounds for cancellation (Art. 58 EUTMR).
When and under what legal requirements can a Community trademark be cancelled?
The cancellation of a Community trademark may take place on both absolute grounds (e.g. lack of distinctive character, descriptive or misleading indications) and relative grounds for refusal (conflict with earlier rights). Anyone may apply for cancellation if the trademark has not been put to genuine use in the EU for an uninterrupted period of five years. In addition, the trademark can be declared revoked or invalid by the EUIPO on application, for example, if grounds for refusal arise subsequently, due to deception or use in bad faith. A cancellation procedure can be initiated both before the EUIPO and before Community trademark courts in every member state.
How does the legal effect of a Community trademark differ in case of incomplete use within the EU?
A Community trademark must, in principle, be put to genuine use within the five-year grace period in the European Union to remain valid. Legally, it is not required to be used in every single member state, but the use must go beyond purely symbolic uses and incur a genuine market share in relevant parts of the EU. Incomplete or use only in an insignificant territory does not meet the requirements of genuine use under Art. 18 EUTMR. If the trademark is used only to a small extent or solely in a single member state, this may lead to cancellation or limitation to national trademarks in individual cases. The assessment of genuine use is always case-specific, taking into account the extent, duration, and nature of the use.
