Articles
Client Alert - Improved Cost Effectiveness for Community Trade Mark Registrations
By William M. Borchard
Feb. 5, 2003
The Current Situation
We have advised many clients to apply for a Community Trade Mark registration ('CTM') to cover all of the existing 15 countries of the European Union:
Austria, Benelux (Belgium, Netherlands and Luxembourg), Germany, Denmark, Spain, Finland, France, Greece, Ireland, Italy, Portugal, Sweden, United Kingdom
This has been, and can continue to be, cost effective for a number of reasons including the following:
- The single filing fee and single associate processing fee are substantially lower than the fees charged for separate national applications.
- With the leverage of a CTM application, you frequently can settle disputes with holders of prior national rights without the need for a formal opposition proceeding.
- If there is an opposition, you probably can arrange for the proceeding to be conducted in English.
- You may be able to stop maintaining national registrations in EU countries by claiming seniority rights under a CTM registration.
- You can fulfill the CTM's requirement that a mark be used within each 5 year period by using it in any one of the EU countries.
- You can file name changes, assignments, licenses and renewals in a single place.
The anticipated development
The European Union is scheduled to be enlarged during the first half of 2004 by the addition of 10 countries, mostly in Eastern Europe:
Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovenia, Slovakia
By filing a CTM application early, you can make it even more cost effective for reasons that include the following:
- If your CTM application was filed before, or claims the priority of a national application filed before, an additional country's EU accession date, your CTM application automatically will be extended to that country (subject to any prior national rights there) without additional cost.
- If your CTM application was filed at least 6 months before an additional country's EU accession date, a prior national rights holder there cannot oppose your CTM application (although your CTM rights may not cover that country).
- If your CTM application was filed before an additional country's EU accession date, it will not be subject to refusal on absolute grounds because of its meaning in that country's national language.
- You can avoid the increase in CTM official fees that probably will occur to reflect the additional EU countries.
Improved Cost Effectiveness
Thus, a CTM application continues to be a cost effective way to protect your trademark in Western Europe, and if the additional countries in Eastern Europe and elsewhere are or may become important for your business, you probably can get automatic coverage there—without additional cost—by filing a CTM application now.
We estimate that the current cost of a routine CTM application is no more than $6,000 (all inclusive). If you apply now, this cost will ensure coverage not only in all of the current 15 Western EU countries but also in the proposed 10-13 mostly Eastern EU extension countries.
For more information, please contact your regular CLL attorney or
William M. Borchard, Baila H. Celedonia or Jeffrey H. Epstein.
© Copyright 2003 Cowan, Liebowitz & Latman, P.C.