The main legal provisions regarding the Community trade mark are contained in three Community regulations, namely:

Council Regulation No 40/94 of 20.12.1993 usually referred to as `the basic Regulation' or the `CTMR';
Commission Regulation No 2868/95 of 13.12.1995 implementing Regulation 40/94, usually referred to as the `Implementing Regulation' or the `IR';
Commission Regulation No 2869/95 of 13.12.1995 on the fees payable to the Office, usually referred to as the `Fees Regulation' or the `FR'.

In addition to these three Regulations, on 5.2.1996, the Commission adopted Regulation No 216/96 laying down the rules of procedure of the Boards of Appeal.

The Office has also adopted various guidelines on proceedings before the Office and the President of the Office has taken Decisions and issued Communications.

These documents may be consulted and downloaded either by clicking on any of the underlined titles or by clicking on the heading Legal Aspects, to be found on this site. If you would like to consult a published version of these documents, please take note of the following OHIM Official Journal (OJ) publication references:

A CTM is a sign for identifying and distinguishing goods or services valid across the European Community, registered with the OHIM in accordance with the conditions specified in the CTMR.

1.3. What does it mean when it is stated that the CTM has a unitary character?

A CTM application and a CTM are valid in the European Community as a whole. The application and the ensuing registration extend automatically to all 25 Member States of the European Community indivisibly. It is not possible to limit the geographic scope of protection to certain Member States. Furthermore, there is one single registration procedure, which is centrally handled before the OHIM. No actions before the national industrial property offices are necessary. In addition, an invalidation, a refusal or the expiry of the CTM necessarily applies for the whole of the Community. Lastly, the CTM is one single asset of property. It can only be transferred for the whole of the Community and not with respect to individual countries. However, territorially or otherwise limited licences, even limited for a particular Member State, are possible.

The CTM system leaves the national trade mark systems of Member States (as far as Belgium, Luxembourg and the Netherlands are concerned, the Benelux Trade Mark system) unaffected. Business enterprises are free to file national trade mark applications, a CTM application, or both. The large number of national trade marks already existing and registered in the Member States remain valid. It is entirely up to the strategy of the applicants and proprietors of trade marks whether they want to rely exclusively, or in addition to national trade mark rights, on the CTM protection. However, earlier national trade marks constitute earlier rights against a CTM, and vice versa. The Office does not examine such earlier rights of its own motion. Only the proprietor of the earlier right can raise this issue, either by filing an opposition within 3 months of the publication of the CTM application, or following the registration of the CTM by filing an application for a declaration of invalidity on relative grounds.

1.5. Is there an all - or - nothing principle if a ground for refusal applies only with respect to one Member State of the Community?

Yes. The Office refuses a CTM application if a ground for refusal exists only in part of the Community. If, for example, the trade mark consists of the designation of the product in one official language of a Member State of the Community, the Office will refuse the CTM application. Earlier rights, raised in an opposition or in an application for a declaration of invalidity, prejudice the registration of a CTM even if they only exist in one Member State of the Community. The effects of this situation, however, should not be exaggerated. Cases where an application must be refused because the mark constitutes a non distinctive or a descriptive or generic term in only one language of the Community (and not one of their major world trading languages) are not so frequent. If an earlier right in only one Member State exists, it goes without saying that this right can not be invalidated by the later filing of a CTM by another person. The opposition or invalidity procedure before the OHIM will, in such cases, offer ample leeway for an amicable settlement. Lastly, a CTM application which has been refused, or a CTM which has been declared invalid or revoked, may be converted into national trade mark applications in all the Member States of the European Community in which the ground for refusal does not apply. The ensuing national trade mark applications will retain the date of the CTM application.

A CTM may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

word marks including letters, numbers or combination of letters, numbers and words;
figurative marks, whether or not including words;
figurative marks in colour;
colours or combinations of colours;
three-dimensional marks;
sound marks;

Although fulfilling the definition of a trade mark, a sign may not be registered as a CTM if an absolute ground for refusal applies, namely if the sign:

is devoid of any distinctive character;
exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
has become customary in the current language or in the bona fide and established practices of the trade;
is contrary to public policy or to accepted principles of morality;
is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

There are some other absolute grounds for refusal related to the shape of the goods, the origin of alcoholic beverages and certain official emblems.

The lack of distinctive character, the qualification of being an indication to serve to designate the kind, quality, quantity etc., of the goods or services, as well as the qualification to have become customary in the current language or in the practices of trade may be overcome if it is shown that the trade mark has become distinctive in consequence of the use which has been made of it.

Furthermore, upon opposition, a mark shall not be registered as a CTM if a relative ground for refusal applies.

Opposition must be filed within three months from the date of publication of the CTM application in the CTM Bulletin by the proprietor of the earlier right.

an earlier CTM or a CTM application;
an earlier national trade mark or a national trade mark application filed or registered in a Member State of the European Union;
an international registration under the Madrid agreement or the Madrid Protocol with effect in a Member State of the European Union;
a non registered mark or another sign used in the course of trade of more than mere local significance valid in a Member State;
a trade mark which is well-known in a Member State (within the meaning of Article 6 ter of the Paris Convention).

if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier mark is protected;
if because of its identity or similarity to the earlier trade mark and the identity of similarity to the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade mark;
if it is identical or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier mark has a reputation and where that mark would suffer unfair advantage or detriments in respect of its distinctive character or its repute.

It should be noted that where a ground for refusal exists in any part or country of the European Union, the CTM may not be registered as a whole. For example, if there is an identical national trade mark for the same goods or services in just one of the Member States, the CTM will, on opposition of the proprietor of that earlier mark, not be registered.

These grounds for opposition also constitute grounds for a declaration of invalidity that may be requested after the registration of the CTM.

The procedure for the registration of a CTM is an examination procedure which comprises the following three main parts:

firstly, examination of the application, which includes whether or not a filing date may be accorded, the formalities examination and the examination as to absolute grounds for refusal, during which search reports are established.
secondly, publication of the application.
thirdly, the procedure up to registration which may comprise opposition proceedings.

The first part of the procedure starts with the receipt of the application, either directly at the OHIM or via a central industrial property office, and involves:

examination as to whether or not a filing date may be accorded, the classification check of the goods and services designated in the application;
the sending of the list of goods and services to the Translation Centre for Bodies of the European Union (Luxembourg);
the establishment of the CTM search report, the transmission of the application to central industrial property offices in Member States, for searches in their national registers and the transmission of all reports to the applicant or his representative;
examination as to absolute grounds for refusal.

The OHIM will not examine ex officio relative grounds for refusal. These may be raised only by third parties in opposition proceedings or in cancellation proceedings after registration of the CTM.

The second part of the procedure is the publication of the application in part A of the CTM Bulletin, where the result of the examination by the OHIM has been positive.

The third part of the procedure is reserved for third parties to invoke their earlier rights in opposition proceedings. Opposition may be lodged within three months following the publication of the CTM application. Where the outcome of opposition proceedings is positive for the applicant, or where no opposition has been filed, the CTM will be registered.

Appeals proceedings constitute a special procedural phase. Appeals can be filed during the aforementioned parts of the procedure against decisions of the Examiners, the Opposition Divisions and the Administration of Trade Marks and Legal Division. A decision which does not terminate proceedings as regards one of the parties can be appealed only together with the final decision, unless separate appeal is allowed in that decision.

1.2. What is a Community Trade Mark (CTM) ?