SIB - Società Italiana Brevetti

Community trademark registration takes place through a single procedure and confers protection in all European Union member states (Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom) as a whole and indivisibly. Registration is handled by the Office for Harmonization in the Internal Market (OHIM), and no actions before national industrial property offices are necessary.

The Community trademark system coexists with European national registration systems. This means that earlier national trademarks constitute earlier rights against a Community trademark and vice versa.

A Community trademark application must include an indication of the trademark or specimen (representation) if it includes graphic elements or colours, the list of goods and/or services for which registration is sought, the name and address of the applicant and, if the applicant has chosen to be represented before the OHIM, a signed power of attorney. (Non-EU applicants are obliged to be represented before the OHIM).

A Community trademark application may be filed either with national trademark offices of European Union member states (Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom) or with the OHIM located in Alicante (Spain). No local presence is required.

Availability searches are always advisable when filing national and Community trademark applications. However, in the case of the Community trademark a thorough availability search would mean ordering a search in each of the European Union's 27 states - and of course multiplying the search costs.
Upon the applicant's request only, and for a fee, the Office for Harmonization in the Internal Market carries out a similarity search as to prior trademarks in the national registers of Austria, Czech Republic, Denmark, Finland, Greece, Hungary, Lithuania, Poland, Romania, and Slovakia. The prospective applicant could therefore limit an availability search to the remaining European Union member states. Alternatively, it is advisable to file the application saving the cost of a EU-wide search and deal with possible oppositions and /or objections by third parties if they occur.

The examination performed on Community trademark applications is a quasi-adversarial proceeding aiming to assess whether registrability requirements have been met.
Descriptiveness, unlawfulness and deceptiveness are absolute grounds for refusal. Secondary meaning may be invoked to overcome certain objections on absolute grounds. The OHIM then produces a Community search report listing identical or similar Community trademark applications and registrations for identical and similar goods and services.
No examination as to prior national and even Community marks is carried out by the OHIM.

This depends on whether absolute grounds for refusal are found to exist and / or whether the application is opposed. If neither of these conditions occur, registration is granted after about 15-18 months from application.

Oppositions can be lodged within three months following the publication of the Community trademark application. Therefore, earlier rights do not automatically cause refusal of the Community trademark application. The owners of identical or confusingly similar prior Community, national or International trademarks designating one or more European Union member states, the owners of well-known marks pursuant to article 6 bis of the Paris Convention or of registered trademarks enjoying a reputation, and the owners of unregistered rights -if provided for by the law of the member state- having more than a local significance for identical or similar goods/services may file an opposition. The applicant for the opposed mark may request the opponent to prove use of the prior mark if registered for more than 5 years.

All Community trademark applications are published in the weekly Community Trademarks Bulletin, whose data base is also available on the web site of the Office for Harmonization in the Internal Market. More conveniently, our free trademark watch service warns clients owning national trademarks of any conflicting Community trademark applications.

L'uso in un solo paese dell'Unione Europea dovrebbe essere sufficiente per soddisfare l’esigenza dell'uso. Tuttavia la questione è ancora discussa anche se certamente l’utilizzo solo in alcuni paesi dovrà essere considerato sufficiente.

A Community trademark registration has a duration of 10 years running from the filing date. An indefinite number of renewals is possible for subsequent 10-year periods.

Unregistered trademark rights may be used to oppose a Community trademark application if such rights were acquired before the date of the Community trademark application, and if according to the law of the state in which the unregistered rights were acquired the holder of such rights is entitled to prevent the use of a subsequent trademark.