EUROPEAN COMMUNITY TRADEMARK TAKES EFFECT
By:
Eric Stenshoel
New York
On April 1, 1996, the new European Community Trademark came into effect with the opening of the European Community Trademark Office, officially known as the Office for Harmonization in the Internal Market (O.H.I.M.), in Alicante, Spain. Previously, the only way to obtain trademark protection throughout Europe was to obtain a separate registration in each country. Under the Madrid Agreement, which has not been signed by the United States, companies located in one of the approximately 40 signatory countries have been able to file a single application with the World Intellectual Property Organization in Geneva covering a number of countries, including nine of the members of the EC, but the resulting registrations were still only national in scope. In contrast, applications for Community Trademarks are open to companies or persons from any country that is a party to the Paris Convention (including the United States) or a signatory to the TRIPs Agreement, and the resulting registration will cover the entire European Community.
The Community Trademark offers a clear advantage in cost and administration to companies doing business in several European countries. For companies in the United States and other countries not party to the Madrid Agreement, it is the only way to effect a multilateral trademark application and, even for companies able to use the Madrid filing system, it offers a more economical means to obtain trademark protection throughout Europe.
The European Trademark will co-exist with both the national registration systems and the multilateral applications through the World Intellectual Property Organization. While it is expected that most owners of national registrations will keep them in effect until they have had more experience with the Community Trademark system, the European Trademark has already proved to be very popular. The number of applications submitted has greatly exceeded all projections, with the greatest number coming from the United States.
Community Trademarks may be registered for words, designs, logos, pictures, shapes of containers and packaging, colors or combinations of colors, and sounds (musical phrases). Applicants from outside the EC must use a trademark agent within the EC. The cost of a Community Trademark application, excluding fees for the local agent, is 975 ECU (currently about $550). The application procedure is similar to that of individual member countries in the EC, with an examination of prior marks, as well as consideration of generic terms in any of the languages of the EC, and publication for possible opposition by other trademark proprietors. Oppositions to registrations of Community Marks must be made within three months of the date of publication. Community Trademarks have a term of 10 years and may be renewed indefinitely.
