Registering a trade mark in the EU

This guide was last updated in March 2008.

Scope of the Community Trade Mark right

Applications are filed at the Community Trade Marks office (the Office of Harmonisation in the Internal Market, known as OHIM). A Community Trade Mark ( CTM ) Registration covers all 27 member states of the European Union. It is a statutory right governed by the Community Trade Mark Regulations.

The CTM System runs parallel to the trade mark legislation of each national EU member state. All rights in a CTM Registration date back to the date of filing and not when the application is actually granted.

The 27 member states of the European Union

• Austria
• Belgium
• Bulgaria 
• Czech Republic
• Cyprus
• Denmark
• Estonia
• Finland
• France
• Germany
• Greece
• Hungary
• Italy
• Latvia
• Lithuania
• Luxembourg
• Malta
• The Netherlands
• Poland
• Portugal
• Romania 
• Slovak Republic
• Slovenia
• Spain
• Sweden
• Republic of Ireland
• United Kingdom

Information required to file an application

• The full name and address of the applicant;
• The country and, if appropriate, the state of incorporation of the applicant (needed in the case of federal states such as Australia, Canada and the US);
• Full details of the trade mark;
• A good representation of the logo or design, if appropriate; 
• An indication of the goods and services sold or to be sold under the trade mark (there are 45 classes of trade marks, described with explanatory notes by OHIM in this 15 page / 460KB PDF); and
• Details of the application on which Convention Priority is to be claimed.

Procedure and time scale

Allow around 14 or 15 months from the start of the process to the issue of a Registration Certificate. The following are the main steps in that process:

Step 1: You can conduct a search to determine if the mark is free to use and register (although this is optional).

Step 2: File your application, either on paper or electronically.

Step 3: In anything from a few days to three weeks (it's faster if you file electronically), you'll receive notice of the official filing date together with your application number.

Step 4: Within 2–3 months of filing you will receive comments from OHIM on the formalities examination. This will raise any specific queries that OHIM may have for example, regarding your class choices, wording of the specification and objections to the distinctiveness of the mark (i.e. is the mark a term other traders need to use to describe their goods and services). If objections are raised, these can be countered in writing.

Step 5: Within 8–9 months of filing, you will receive Community and National Search Reports. These will list any trade marks, either granted or pending, that appear to conflict with your application. You can amend or withdraw your application at this point, although the Reports are only advisory. As of 10th March 2008 Community Search Reports will be produced in all cases but National Search Reports will only be prepared on applicants specific request and a specific fee per participating National office (17 offices as of March 2008) must be paid for the request for National searches to be valid and this request must be made at the time of filing the Community Trade Mark Application by ticking the relevant box.

Step 6: Your application will be advertised in the Community Trade Marks Journal within around 11 months of your original filing. This is an opportunity for other brand owners to file their objections. If they do so, the application may fall completely or be delayed.If a formal opposition is filed, opposition procedures can last for two years or more. Many brand owners hire watching services that, like a search engine, will automatically search every published application for potential conflicts.

Step 7: If there are no objections, OHIM will invoice you or your trade mark attorneyin around4 months of the advert appearing to pay the registration fee to complete the application process. Once the registration fee is paid, your trade mark application is granted and this will be visible on OHIM's website. This should be around 14 or 15 months after the filing date, if everything goes to smoothly. The Registration Certificate may take another two months to arrive after payment of the registration fee.

How can Pinsent Masons help?

Pinsent Masons has a dedicated Trade Marks & Designs Team , which consists of qualified Trade Mark Attorneys. We can file and prosecute trade mark applications across the globe and conduct searches on potential brands and advise on risks to use in terms of infringement.