DISTINCTIVE SIGNS

1. Foreword

The inauguration in Alicante of the Office for Harmonization in the Internal Market (trade marks and designs) and its opening to the public are important events for the European Union. The large single market necessary for the economic development of Europe is not possible without the free movement of goods and services. The Community trade mark is the supreme example of an instrument which promotes this frontier-free movement. It will help enterprises in their business and will open up new markets for them. Industrialists, traders and all professional people will find in the new Office an additional tool to help them develop their activities.

The trade mark is a key element of company policy: enhancing its value means holding on to or acquiring market shares. The businessman's tasks are not confined to organization and production. A company's goods and services, as well as its image, must be visible on the market. The trade mark is an indispensable instrument for communicating with the public. It enriches and enhances the consumer's relationship with the goods and services by associating distinctive values with them. The trade mark does not just identify the origin of goods: it establishes a relationship with the consumer based on trust by staking the company's reputation and offering a guarantee of consistent quality.

A trade mark is a capital good. It can be commercially exploited by licensing, franchising, merchandising and sponsorship. As a marketing tool it may even constitute the company's main asset.

2. The trade mark and the internal European market

The completion of the 'common market' or 'internal market' is forcing companies to change their trade mark policy. Since 1 January 1993, the free movement of goods, persons, services and capital within the Community has given a European dimension to the trade mark policies of an increasing number of companies.

Those which still base this policy on their main market - their national market - will, in ever increasing numbers, become aware of the requirements of the European market.

Prior to the introduction of the Community trade mark, companies could protect their trade marks throughout the European Union in two ways: nationally and internationally.

Registration at national level involves registering identical trade marks in each Member State of the European Union. Registration at international level makes it possible to obtain a number of trade marks the effects of which, in each of the countries party to the Madrid Agreement or the Madrid Protocol designated by the applicant, are the same as national registration. This involves applying to the World Intellectual Property Organization in Geneva on the basis of a trade mark already applied for and registered in a country party to the Agreement or the Protocol. This route is available only to companies having their headquarters or a real and effective establishment in those countries.

The Community trade mark offers the advantage of uniform protection in all countries of the European Union on the strength of a single registration procedure with the Office for Harmonization.

It is both an alternative to, and complementary to, the two previous procedures: each of the three types of trade mark offers a level of protection adapted to specific business needs. The national trade mark offers protection limited to the market of a single country. The Community trade mark offers protection for the entire market within the European Union. The international trade mark meets the particular needs of those who wish to obtain protection also in the countries outside the European Community.

These three types of trade mark are not mutually exclusive: various links between them allow companies to develop their protection system according to their needs.

3. What are the advantages of the Community trade mark?

The Community trade mark gives its proprietor a uniform right applicable in all Member States of the European Union on the strength of a single procedure which simplifies trade mark policies at European level.

It fulfils the three essential functions of a trade mark at European level: it identifies the origin of goods and services, guarantees consistent quality through evidence of the company's commitment vis-à-vis the consumer, and is a form of communication, a basis for publicity and advertising.

The Community trade mark may be used as a manufacturer's mark, a mark for goods of a trading company, or service mark.

It may also take the form of a collective trade mark: properly applied, the regulation governing the use of the collective trade mark guarantees the origin, the nature and the quality of goods and services by making them distinguishable, which is beneficial to members of the association or body owning the trade mark.

The Community trade mark covers a market of more than 350 million consumers who enjoy some of the highest living standards in the world. It is the ideal instrument to meet the challenges of this market. The Community trade mark is obtained by registration in the Register kept by the Harmonization Office. When registered, transferred or allowed to lapse, the effect of such action is Community-wide. It is valid for a period of 10 years and may be renewed indefinitely. The rules of law applicable to it are similar to those applied to national trade marks by the Member States. Companies will therefore find themselves in a familiar environment, just on a larger scale.

4. The Community trade mark and national trade marks The Community trade mark may be obtained for a sign which is either applied for directly at the Harmonization Office or which has been applied for previously through a national office. It does not imply revocation of previous national or international protection, but merely makes such protection more effective and more manageable.

A newly-created sign adapted to the various languages, cultures and customs within the European market may be protected directly by applying for first registration as a Community trade mark at the Harmonization Office.

A Community trade mark may protect a sign which has already been filed at a national office of a country party to the Paris Convention or to the Agreement on trade-related aspects of intellectual property rights concluded under GATT (TRIPs Agreement). In this case, a right of priority may be claimed for a period of six months.

A national trade mark or series of national trade marks may be registered as a Community trade mark irrespective of their age. The company will thus have the perfect instrument to meet the challenges of the internal market.

Opting for the Community trade mark does not imply the abandonment of national trade marks. The company may retain these as long as it wishes. The seniority of a national mark may be claimed at the Harmonization Office, even if the national trade mark is subsequently cancelled or surrendered in favour of a Community trade mark. The company enjoys the same rights as if the national trade mark were still registered.

In the event of refusal to register an application, or the revocation or annulment of a Community trade mark, applications for national trade marks may be made in all countries of the European Union in which there are no such grounds for refusal, revocation or annulment. The advantage of priority or seniority is therefore maintained, as are any investment and advertising campaigns previously carried out in these countries.

5. Which trade mark may be registered?

A Community trade mark must meet two conditions: a trade mark is a sign which can be represented in graphic form, and it must make it possible to distinguish goods and services from those of another company.

Signs which may be registered as a trade mark may therefore include:

• words, invented or belonging to a known language (in the latter case they must not be used in that language as generic terms for the goods and services to which the trade mark applies);
• names and first names;
• signatures;
• letters, numbers;
• acronyms, combinations of letters, numbers and signs, logos;
• slogans;
• designs, figures and pictographs;
• portraits of people;
• collections of words or graphic elements and complex signs associating verbal and graphic signs, e.g. labels;
• three-dimensional trade marks such as shapes of goods or their packaging;
• colours or combinations of colours;
• sound marks, in particular musical phrases.

6. Who may obtain a Community trade mark?

Access to the Community trade mark is, as a rule, open to all types of applicants.

Any natural person may be proprietors of a trade mark. It is not necessary to be a businessman or to undertake to use the trade mark oneself on the market. A graphic sign may also be registered by its designer, with the ultimate aim of transferring it to a company. However, unfair practices involving lack of good faith on the part of the applicant at the time of filing may result in revocation of the trade mark.

Any legal person may register a Community trade mark. Access is open to private companies or associations for their direct use, to holdings for use by the companies which they control and to associations or other public bodies wishing to identify their members' goods or services by means of a collective trade mark.

All natural or legal persons who are domiciled or have their seat or who have a real and effective establishment within a country which is either a member of the European Union, party to the Paris Convention or signatory to the TRIPs Agreement may be proprietors of Community trade marks. All natural and legal persons who are nationals of these countries are also eligible.

7. How to register

1. Date of filing
   On receipt of the application, an examiner at the Office checks that it includes all the items necessary and that the fees have been paid. If necessary, the applicant is requested to rectify any irregularities. The date of filing is assigned at the end of this first stage.
   
   
2. Search reports
   Search reports on existing earlier trade marks are drawn up by the Harmonization Office and by the offices of some Member States of the European Union once a date of filing has been accorded.
   
   The Harmonization Office draws up a search report relating only to earlier Community trade marks. Central industrial property offices of those Member States which have decided accordingly draw up simultaneously and on their own behalves, search reports relating to earlier national trade marks in their registers. Mandatory time limits are set for the completion of all these reports, which are forwarded to the applicant by the Harmonization Office.
   
   
3. Absolute grounds for refusal
   The application may be refused by the Harmonization Office on 'absolute' grounds, on the basis of the characteristics of the trade mark in respect of which the application for registration has been made.
   
   The Office's examiners check that the application relates to a sign which may be registered as a Community trade mark.
   The Office must ascertain that the signs used are distinctive. They must not:
   • be a generic term for the goods or services in question in one of the languages of the European Union;
   • designate in one of the abovementioned languages the quality, quantity, value, geographic origin or other characteristics of the goods or services;
   • have become a customary sign in ordinary language or in the bona fide and established practices of the trade, even in only one of the Member States of the European Union.
   • These objections may be overcome if the use of the sign in question has given it a distinctive character or 'secondary meaning'.
   
   Certain special characteristics of the shape of a product in the case of three-dimensional trade marks, the deceptive nature of trade marks or the fact that they are contrary to public order or to accepted principles of morality may also constitute absolute grounds for refusal of registration.
   
   As for all Harmonization Office's decisions, an appeal may be made against the refusal of registration.
   
   If, despite the examination, the sign actually should not have been registered, any third party may subsequently request the Harmonization Office to revoke the Community trade mark in question.
   
   
4. Publication of the application
   
   The application is published if there are no absolute grounds for refusal and if notification of the search reports of earlier trade marks does not cause the applicant to withdraw the application.
   
   If the application is not rejected on absolute grounds and if the applicant does not withdraw his application after taking note of the search reports, it is published in the Community Trade Marks Bulletin by the Harmonization Office in all official languages of the European Union.
   
   
5. Time limit for opposition prior to registration
   
   Within a period of three months following the publication of a Community trade mark application, third parties may give notice of opposition to registration of the trade mark.
   
   In order to be registered as a Community trade mark, a sign must avoid any possibility of confusion on the part of the public and thus avoid affecting earlier rights held by other proprietors of trade marks.
   
   For this purpose, proprietors of earlier trade marks may give notice of opposition within a period of three months following publication, specifying the grounds on which it is made. The opposition procedure between the applicant and the opposing parties takes place before an Opposition Division in the Harmonization Office, which cannot invoke these grounds ex officio to refuse an application.
   
   If the signs and the goods or services are identical, this will lead to refusal on account of the inevitable confusion it will cause on the part of the public. Any similarity either of the signs or of goods and services, or of both at once, is also likely to lead to confusion. There is deemed to be a similar risk where there is a likelihood of association on the part of the public between the signs. Any sign which is identical or similar to a sign protected by an earlier trade mark and for which an application for registration has been made in relation to goods or services which are totally different from the first will be refused if the earlier trade mark had a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier Community trade mark. A 'dilution' of the distinctive character of the earlier trade mark is an example of the harm which might be done.
   All these grounds for refusal may be invoked in the opposition procedure before the Harmonization Office by proprietors of earlier rights.
   
   Earlier rights may not be invoked if their proprietors are not in a position to prove, if requested by the applicant to do so, that they have been put to genuine use during the past five years. The existence of earlier trade mark rights is a significant risk for the successful outcome of any Community trade mark registration procedure. There are more than 3 million registered trade marks in the Member States of the European Union (including international trade marks in those Member States party to the Madrid Agreement). In addition, there are unregistered trade marks and other unregistered signs, prior identification of which is difficult.
   
   The opposition procedure allows all means of communication to be used and requires the physical presence at the Office's headquarters of the parties or their representatives only in the case of oral proceedings. The Office's Opposition Division concludes the opposition procedure either by totally or partially refusing the application or by rejecting the opposition and registering the trade mark. If no opposition is raised within a period of three months following publication, the trade mark is registered.
   
   

8. What is the role of the Community Register?

The Register of Community trade marks provides access to all information on Community trade marks and their proprietors. Entry in the Register gives effect vis-à-vis third parties to rights attaching to a Community trade mark.

On completion of the registration procedure, the Community trade mark is entered in the Register. Any transfers, licences or other rights relating to the trade mark must be entered in the Register to have effect vis-à-vis third parties. Goods and services claimed for each trade mark will be entered in all official languages of the European Union, as will any information which needs to be translated in order to be accessible to the citizens of all Member States of the European Union. The Register is also a database which can be consulted throughout the world in real time directly from all national industrial property offices or via a company's industrial property service and industrial property consultant. The Office's Bulletin distributes the information contained in the Register in the form of a printed publication with the trade marks shown in colour where appropriate.

9. What rights does the registration of a Community trade mark confer?

The Community trade mark gives its proprietor protection against the reproduction or imitation of his trade mark throughout the European Union. It is also transferable and may be licensed.

The Community trade mark gives its proprietor the right to prohibit third parties from using identical or similar signs to those covered by the trade mark without his consent throughout the European Union. Similarity is judged by reference to the likelihood of confusing the public, including the likelihood of association between the sign and the trade mark. The existence of a reputation in the European Union enhances the protection given to a Community trade mark. The prohibition from using identical or similar signs is extended to goods or services which are not similar to those for which the trade mark is registered if such use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. Where the proprietor of the trade mark has proceeded or agreed to market goods under this trade mark in a Member State of the European Union, he cannot prohibit their free movement in the European Union. This limitation on the rights conferred by the Community trade mark is derived from the rule of exhaustion of those rights within the Community, which is also applicable to national and international trade marks of Member States of the European Union.

Parallel imports of products covered by the Community trade mark from countries which are not members of the European Union are not subject to this rule and to this limitation, with the exception of those countries party to the Agreement on the European Economic Area.

The Community trade mark may be transferred in respect of all or part of the goods or services for which it has been registered. The transfer does not necessarily involve a transfer of the company. However, such a transfer must not result in the public being misled, in particular with regard to the type, quality or geographic origin of the goods and services.

10. How to enforce the protection afforded by the Community trade?

Infringement of the rights conferred by the Community trade mark is sanctioned by the Community trade mark courts designated in each Member State of the European Union following an infringement proceeding.

Activities which infringed trade mark rights may be sanctioned.

Responsibility for this lies with the European Union's Community trade mark courts and not with the Harmonization Office. The plaintiff may choose between two courts: the court of the Member State in which the infringement was committed or the court of the Member State in which the defendant is domiciled. The court of the Member State in which the infringement was committed has jurisdiction only of acts committed within the territory of the Member State in which that court is situated. Opting for the court of the Member State in which the defendant is domiciled has the advantage of combining all the disputes in a single proceeding, the court having jurisdiction of all acts of infringement committed within the territory of the European Union. The advantage of having only a small number of Community trade mark courts of first and second instance with exclusive jurisdiction for Community trade mark infringement actions is that the judges are highly specialized. Decisions of these courts may be enforced in the other Member States of the European Union by having recourse to the simplified enforcement procedure introduced by the 1968 Brussels Convention on jurisdiction and enforcement of judgments in civil and commercial matters.

11. What is the duration of the protection afforded by the Community trade mark?

Renewal of the registration extends the duration of the protection afforded by the Community trade mark indefinitely.

Registration of the Community trade mark may be renewed every 10 years from the date of filing, at the proprietor's request. A basic renewal fee and class fees for each class of goods or services in excess of three must be paid; these fees are doubled in the case of collective marks.

12. How and on what grounds may an application for revocation or declaration of invalidity of a Community trade mark be made?

Throughout a trade mark's life, the rights of its proprietor may be revoked following a revocation proceeding or he may have his trade mark declared invalid following an invalidity proceeding. These actions may be brought exclusively before the Harmonization Office as a direct action.

Failure to use the trade mark genuinely for five consecutive years, development of the mark into a generic name and the misleading nature of the trade mark resulting from its use are the main grounds for bringing an action for revocation. The Community trade mark is subject to the same obligation of use as marks registered in the Member States of the European Union and international trade marks having effect in those States. The rights of the proprietor of the trade mark may be revoked if he has failed to put the trade mark to genuine use during the five years following registration or for a period of five consecutive years. The Community trade mark offers the advantage that genuine use in a single country of the Europe Union constitutes use in the entire Community, thus avoiding revocation of rights in all the Member States. It is therefore designed to meet a company's requirements, even if its marketing policy does not extend to all countries within the European Union. Any person may invoke absolute grounds (including lack of distinctive character, 'genericness' or misleading nature of the trade mark).

An action of invalidity on relative grounds may be based only on earlier rights. A company which has not made use of the opposition procedure may thus request that a Community trade mark be removed from the Register. However, even if acknowledged to be the proprietor of an earlier right, the applicant must not have acquiesced in the use of the trade mark within the territory in which that earlier is valid for more than five years. The Office has exclusive jurisdiction with regard to direct revocation or invalidity actions. The parties concerned, therefore, may not bring the matter to a court. Courts in Member States of the European Union, however, may revoke or declare invalid a Community trade mark when the issue is put to them as a counterclaim in an infringement action based on the trade mark.

13. How can an appeal be lodged against a decision by the Office for Harmonization?

Any final decision by one of the Office's bodies, in so far as it has adversely affected one party, is subject to appeal on the initiative of that party.

The appeal is brought before the Office's Boards of Appeal. These are quasi-jurisdictional bodies, independent of any instructions by the Office, and their members are appointed by the Council of the European Union. The appeal is subject to a fee. The Board of Appeal's decision may in turn be subject to judicial review before the Community courts on the initiative of the unsatisfied party. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, abuse of power and, in particular, for infringement of Community trade mark law or any other rule of Community law. The review procedure opposes the party making the appeal against the Harmonization Office before the Court of First Instance, a court attached to the Court of Justice of the European Communities. The Court of First Instance may confirm, invalidate or alter the Board of Appeal's decision.

A final appeal on points of law only may be made to the Court of Justice. Proceedings before the Court of First Instance or the Court of Justice are governed by the rules of procedure applicable before these courts and are held at the seat of the courts in Luxembourg.

Source OHIM