Registering a trademark in the EU ... the easy way

by Le Quang Vinh, Attorney at BROSS & Partners Law Firm

With 27 member states, each formerly with its own trademark office, the European Union could present an impracticable barrier to trademark owners seeking to register their marks for the EU market. For this reason, the European Commission in 1994 created a unified registration system.

The nature of this common system is not to deny national sovereignty but to harmonise nations’ relevant intellectual property laws into a united form. It’s expected that this system will eventually replace all current national registration systems.

The competent body under the EU responsible for operating the system is the Organisation for Harmonisation of Internal Market (also known as "OHIM"). A trademark which is filed and registered with the system is called a Community Trademark (also known as "CTM").

This trademark registration system is relevant to Viet Nam because the EU is one of the largest import markets for Vietnamese exporters, buying such products as footwear, garments, seafood and coffee. The defence of trademarks and brand names in this growing market is increasingly important to Vietnamese exporters.

To register a CTM in all 27 member states, enterprises file a single application via paper or electronic filing. OHIM will NOT issue any rejection for the filed CTM unless such CTM falls into one of the absolute grounds for refusal. In the event that CTM falls within one of these grounds, only prior filed/registered trademark owners have the right to oppose the CTM.

A registered CTM that is used in commerce in at least one EU member state is considered to be used throughout the territory of the EU. A Vietnamese enterprise that holds a CTM has rights independent of trademark filings in any other country and can claim priority dates in any countries which are members of the Paris Convention on the Protection of Industrial Property Rights.

CTM applications may be refused on the basis of absolute grounds for refusal. Absolute grounds for refusal include: trademark is devoid of distinctive character; the trademark consists exclusively of signs or indications designating the kind, quality, quantity, intended purpose, value, geographic origin or time of production of the goods or services, or other characteristics of the goods or services; signs or indications that have become customary in trade; mark is contrary to public policy or principles of morality; or the mark is deceptive with regards to the nature, quality or geographic origin of the goods or services; among other more specific grounds.

In addition, relative grounds for refusal include a mark that is identical or confusingly similar to prior filed/registered CTMs, international trademarks (under the Madrid Protocol), or national trademarks (directly filed with national trademark offices).

In these circumstances, OHIM has no right to reject the proposed CTM. Instead, OHIM is obliged only to notify prior trademark owners so that they have an opportunity to file in opposition to the proposed CTM within three months of the proposed CTM’s publication in the OHIM Gazette.

If no opposition is raised by a third party within the three-month time limit, it takes about 12-14 months from the filing date for OHIM to issue the CTM registration, a time frame equivalent to the amount of time it takes to register a mark in Viet Nam, but shorter than in the US, Canada, Japan or South Korea. — VNS

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