EUROPEAN COMMUNITY TRADEMARK PROTECTION

At the present time, U.S. companies seeking trademark protection in Europe must file individual applications in each country where protection is desired (except that a BENELUX application may be filed covering Belgium, the Netherlands, and Luxembourg). This process can be tedious, expensive and can lead to multiple litigations in various countries on the continent.

Relief is on the way. Beginning in 1996, U.S. trademark owners and others will be able to file a single trademark application for registration which will cover the 15 member countries of the European Community.

The European Community, at the present time, is a single market of 15 member countries consisting of Belgium, France, Germany, Italy, Luxembourg, the Netherlands, Denmark, Ireland, the United Kingdom, Greece, Portugal, Spain, Austria, Finland, and Sweden. A uniform European Community Trade Mark Law has been established. Rules have been drafted and a European Community Trade Mark Office has been established in Alicante, Spain. Under current timetables, applications for a Community trademark will be acted upon beginning April 1, 1996, although Community applications can be filed beginning January 1,1996. All applications filed between January 1, 1996 and April 1, 1996 will be given an April 1, 1996 filing date. All nationals of countries which are signatories to the Paris Convention (of which the United States is one) are eligible to file for a Community trademark.

The availability of a Community trademark is potentially significant to U.S. and other trademark owners for several reasons. First, a Community trademark registration may be obtained covering all 15 countries for one fee. At the present time, it is estimated that the initial filing fee will be approximately $900.00 which will carry the application up to and including acceptance of the mark for registration. There will then be an additional issue fee which will be approximately $1,400.00, making a total of approximately $2,300.00 in fees for obtaining a Community trademark in 3 classes covering 15 countries containing over 350 million consumers. This is a significant cost savings over the current fees in the individual countries.

Another significant advantage of a Community trademark registration for trademark owners is that use of the trademark would be necessary in as few as one member country in order to maintain protection in all 15 countries in the European Community. At the present time, a U.S. or other trademark owner owning registrations in the individual countries would have to use the mark in each of the countries in order to maintain the individual national registrations.

A third significant advantage is that litigation involving a Community trademark will be centralized. Each European Community member country has designated existing courts as courts that will adjudicate Community trademark cases. A decision issued by a "trademark court" in a European Community member country will be valid and enforceable in all other member countries, thus obviating the need for country-by-country litigation.

The European Community trademark system will not replace the current national registration system, but will be a co-existing system. Circumstances can and will arise which will make a Community registration impracticable. For example, if the mark is barred by a previously registered mark in one or more member countries, a Community trademark will not be possible since the mark would have to be registrable in all member countries to qualify for a Community trademark registration. In such circumstances, the trademark owner would have to file in the individual countries where the mark was available. Provisions are in place at the European Community Trade Mark Office to allow for a Community trademark application that is refused registration to be converted into a national application, whereby the applicant can retain its original Community trademark application filing date. There are also provisions for claiming, in connection with a Community trademark application, the seniority of an earlier national registration which issued in one of the European Community member countries.

If it is determined that a Community trademark is desirable and feasible, the application may be filed in any of the approved languages (English is one) directly at the European Community Trade Mark Office in Alicante, Spain, or at any of the national Trade Mark Offices in any member country. Any application filed in one of the national offices will be forwarded to the European Community Trade Mark Office within two weeks of the filing of the application. If the application satisfies the minimum requirements for filing, it will be the equivalent of a regular national filing in each of the European Community member countries. If the Community trademark application does not meet the minimum requirements for a filing date, the European Community Office will allow the applicant the opportunity to remedy any deficiencies and, upon compliance, the application filing date will be the date the deficiencies are remedied.

If a trademark owner files a Community trademark application within six months from the filing of a corresponding application in any country that is a party to the Paris Convention for the same mark covering the same goods or services (or a more restrictive goods or services), the Community trademark application will be afforded a convention priority filing date equivalent to the filing date of the corresponding application.

Once the application is filed, the European Community Trade Mark Office will perform a search of earlier Community trademarks. The European Community Trade Mark Office will also send a copy of the Community trademark application to the national office of all European Community member countries that have indicated to the European Community Trade Mark Office their intention to do their own search of their own registers (it is unclear at the present time which countries will undertake such searches). The Alicante office will then provide the applicant with a copy of its search as well as copies of any national searches that have been performed. The applicant may then elect to withdraw the application or amend it in some way in order to avoid a conflict with the earlier mark(s) that may be confusingly similar.

Following transmittal of the search reports, the mark will be published for opposition and an opposition may be filed within three months from the publication date. If an opposition is filed, it will be decided by the Alicante Office and the opposition will either be rejected with registration to applicant granted or the opposition will be accepted and the application refused in whole or in part.

If the mark is allowed for registration, it will be effective, subject to payment of the registration fee, for ten years and can be renewed.

At the present time, it is estimated that a Community trademark registration will issue in less than one year following filing, assuming no opposition is filed.

While there are many questions regarding the details of the Community trademark registration process and the relative advantages/disadvantages of this system, all U.S. and other trademark owners interested in trademark protection in Europe should carefully examine their trademark portfolio and decide whether the Community trademark is a viable option.

Gary D. Krugman