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Applications for  registering Community Trade  Marks under Regulation  40/94,
adopted  by the EU's Council  of Ministers on 20  December 1993, may be filed
with the  Alicante-based Office for Harmonisation  in the  Internal Market as
of 1 January 1996,  subject to  the Regulations on  fees and procedures  just
adopted by the European Commission (see IP/95/1448).

What is a trade mark?

A trade  mark  is  a sign  which  is  used  in commerce  by  undertakings  to
distinguish their products or services from those of other undertakings.

Initially, marks served  primarily to indicate  the origin  of the  products,
but  during the  last decade  they have  developed into important  bearers of
goodwill, which represent considerable economical value to its owner.

Thus, the mark has  developed into a major commercial instrument. It  plays a
key role  in modern  economies, which  cannot be  overestimated.   Consumers'
choice of one  or other product is often  based upon his or  her appreciation
of the value of the mark concerned.

Why a Community Trade Mark?

The objectives of  the Community Trade  Mark, created  by Council  Regulation
40/94, are twofold.

First, the Community  Trade Mark constitutes  an important  step towards  the
completion of  the single  market in the  field of  protection of  industrial
property.   This, because under the  existing situation,  protection of marks
can only be obtained  through the  registration of the  mark at the  national
offices of the respective  Member States.  This has resulted in  obstacles to
the  free flow of  goods and services within  the single  market because such
registrations can only provide  for territorial protection under the national
laws  of the  Member States  and  because of  differences  in the  respective
national trade mark legislation.

The  Community Trade  Mark Regulation completes  the Single  Market programme
concerning  marks through  the  creation of  a single,  unitary  registration
system, covering the whole of Community territory.

Once registered,  a Community Trade  Mark shall be  subject to  uniform rules
for  the whole  territory of  the Community.   The  enforcement of  exclusive
rights  relating  to Community  Trade  Marks  shall not  be  hindered by  the
various existing differences in the trade mark laws of the Member States.

Second,  the  Community Trade  Mark  Regulation  rationalises  the means  for
obtaining  trade mark  protection  for the  whole  territory of  the European
Community.

Until now,  the only means for  obtaining protection of a  trade mark for the
whole of Community  territory has been  to file  twelve applications for  the
registration  of the  mark  at  the  national  trade  marks  offices  of  the
respective Member States plus an application at the  common trade mark office
of the three Benelux countries.

Subsequently, the  applicant  had  to proceed  with  his  applications  under
thirteen  different trade  mark  registration  systems, in  eleven  different
languages.

The  Community Trade  Mark Regulation considerably  changes and  improves the
existing situation  within the  Community by  establishing a single,  uniform
trade mark registration  procedure with effect for the whole territory of the
European Community. 

Languages of the Harmonisation Office

The  languages of  the  Harmonisation  Office  are English,  French,  German,
Italian and  Spanish.  However applications for Community  Trade Marks may be
filed  in  any  of  the eleven  official  languages  of  the  Community.   In
addition, the  application shall be published  in all  the official languages
of the Community, on the basis of translations made by the Office.

In his application,  the applicant must indicate  a second language  in which
he is  prepared to proceed  if third parties  oppose the registration of  his
mark. Irrespective of the language  in which the application has been  filed,
the second language must be one of the five languages of the Office.

Subsequently, possible  opponents must choose one  of these  two languages as
the language of the  proceedings.  If both  languages, respectively used  and
indicated by  the applicant are official  languages of  the Office, opponents
have the  choice between the  two.  If  the application has been  filed in an
official language  of the Union, which  is not a language of  the Office, the
second language indicated  by the applicant shall necessarily be the language
of the proceedings.

Notwithstanding this, parties  to the proceedings may derogate from this rule
and agree on the use of any official language of the Community.   This allows
for  the  use of  one of  the  six languages  of the  Union which  are  not a
language of the  Office in cases where,  for example, the applicants  and his
opponent have the same nationality.

The Community Trade Mark registration procedure

Once the  application for the registration of the mark  has been filed at the
Harmonisation  Office,   it  will  carry  out   an  examination   as  to  the
susceptibility of the  mark for registration as  a Community Trade Mark.   In
the meantime, the  application will  be published by  the Office  in all  the
official languages of the Union.

During a period  of three months  following publication  of the  application,
third parties may  oppose the registration of the  mark through the filing of
a  notice  of  opposition  at the  Office.    If  the  Office  considers  the
opposition to be  justified, it will reject  the application.  If  the Office
rejects the opposition, the application will be accepted.

Parties  to the  proceedings may  launch an  appeal against  decisions of the
Office  before  the Boards  of  Appeal,  which  are  incorporated within  the
Office.  The  members of the Boards,  however, are fully independent  and are
not bound by any instructions from the President of the Office.

After registration

The  Community Trade Mark constitutes a unitary  mark for the whole territory
of the Community  and is subject to  one single set of uniform  rules for the
whole  territory of the  Community.   The rules  laid down in  the Regulation
relate, for example, to the  scope of protection of the mark, the renewal and
invalidation  of  the  registration,  and  all   possible  legal  proceedings
relating to it.

The  proprietor  of  the  (registered)  Community   Trade  Mark  shall  enjoy
exclusive rights to  the mark, implying that  he can prohibit the  use of his
mark by  third parties throughout Community  territory.   Registration of the
mark shall be valid for a  period of ten years and may be renewed for further
periods of ten years.

Enforcement of rights relating to Community trade marks 

The Trade  Mark  Regulation obliges  Member  States  to designate  a  limited
number of existing national courts  which shall have exclusive  competence to
take legal  decisions  relating to  Community  Trade  Marks (referred  to  as
"Community  Trade  Mark  courts").     It  is  expected  that   through  this
"concentration" of jurisdiction,  specific expertise on Community  Trade Mark
law will be developed at these national courts. 

Relationship with national trade marks

The Community system does  not replace  the existing trade  mark laws of  the
Member States,  for which a  need will continue  to exist, so that  Community
Trade Marks  will exist  alongside national  trade marks..   Indeed,  Council
Directive  89/104/EEC approximates national trade mark  rules as regards what
can  and cannot be  registered, the exclusivity of  rights and the conditions
under which trade mark rights can be forfeited.

Proprietors  of earlier  registered  national marks,  as  well as  holders of
other earlier similar  rights, may oppose the registration of Community Marks
before the so-called Opposition Divisions of the Office.

In order to inform  the holders of  existing national rights, national  trade
marks offices  of  the Member  States may  carry  out  a search  for  earlier
national marks  in their own trade mark registers,  once new applications for
the registration  of Community trade  marks have been  filed.  To  facilitate
their  task,  the  Harmonisation Office  will  transmit all  applications for
Community Marks to the national offices concerned.

If  the holder  of  an  earlier right  in  any of  the  Member State  opposes
successfully the  registration of a Community  Mark, the  application for its
registration shall be rejected as a whole.

However, it  should be underlined that in such a  case, the applicant for the
Community Mark has  the right to  convert his  application into  applications
for national marks in the other  Member States, whilst maintaining the filing
date which has been granted to the Community application.

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