Out-Law Guide | 30 Mar 2005 | 2:24 pm | 2 min. read
This guide is based on UK law. It was last updated March 2008.
This update is an attempt to give you brief overview of the major changes that will affect the CTM system as a result of the expansion of the EU.
[* States that joined on 1 May 2004.]
[**States that joined on 1 January 2007]
For a current list of European Member States see our article Registering a trade mark in the EU (updated March 2008).
All CTM registrations and applications filed before or claiming priority before 1 May 2004 and 1 January 2007 will automatically be extended to the acceding states as from the date of accession and there will be no increase in official filing or registration fees as a result of expansion.
The proprietors of prior registrations or other rights in acceding states will be able to file oppositions based on those rights against any CTM application filed in or claiming a priority date in the six month period prior to accession. No such right will exist for CTM applications filed prior to 1 November 2003.
It will not be possible to cancel existing CTM Registrations / Applications extended to acceding states on the basis of grounds of objection that exist only in an acceding state, apart from in the case of the existence of a geographical indication in an acceding state, applied before accession, which can be used to cancel a CTM registration with a filing date earlier than 1 May 2004 or 1 January 2007.
Existing traders in acceding states shall not be prejudiced by the extension of Community Trade Mark Registrations / Applications. Accordingly, traders using descriptive terms within acceding states shall not be prevented from using such terms on the basis of an extended Community Trade Mark Registration.
Also, the proprietors of prior Registrations or other rights in acceding states will be able to prevent the use of an extended Community Trade Mark in an acceding state, if such use conflicts with an existing right providing that right / registration was established and filed in good faith, although the proprietor of the earlier right will not be able to cancel the said extended Registration as detailed above.
Applications filed after the 1 May 2004 and 1 January 2007 are governed by the Community Trade Mark Regulation and thus grounds of objection, both relative and absolute, could arise from any of the 27 member states that will be covered by the CTM Regulation at that time.
It was initially expected that the existing advisory search report system would be abandoned as of 1 May 2004 given the costs of conducting searches in possibly all 10 acceding states together with national searches already conducted by the Office at present. However, as of 10 March 2008 Community search reports will be produced in all cases but national search reports will only be prepared on applicants specific request and a specific fee per participating national office (17 offices as of March 2008) must be paid for the request for national searches to be valid and this request must be made at the time of filing the Community Trade Mark Application by ticking the relevant box.
Pinsent Masons has a dedicated Trade Marks & Designs Team, which consists of qualified Trade Mark Attorneys. We can file and prosecute trade mark applications across the globe and conduct searches and advise on risks to use in terms of infringement.