EUROPEAN COMMUNITY TRADE MARK REGISTRATIONS

A Community Trade Mark (CTM) provides a unique opportunity to obtain a trade mark registration throughout the European Union by filing a single application at a much lower cost than the cost of separate national filings (should separate applications be filed in all 27 countries.)

A CTM registration will cover all countries which are member states of the European Union. At present these are Austria, Belgium, Denmark, Ireland, Finland, France, Germany, Greece, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden, United Kingdom, Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia, Slovakia, Romania and Bulgaria.

There is no doubt that if an application to register a CTM succeeds there are considerable advantages to any proprietor.

These may be summarised as follows:

• (a) The cost of achieving registration is much lower than filing separate national applications for registration in the individual countries.
  
  
• (b) If an application to register a CTM is unsuccessful the owner of the mark will then have the option of applying to convert the application into separate national applications whilst at the same time being able to maintain the original CTM filing date. This, of course, includes considerable additional costs.
  
  
• (c) Once a CTM is in place there is only one registration to administer. No proof of use is required on renewal which takes place every ten years.
  
  
• (d) Use in only one European Union country will suffice to maintain a CTM registration throughout the entire Union against an attack on the grounds of non-use. Therefore, as long as a mark is used in at least one country, subsequent use may take place in other countries at the convenience of the proprietor.

Having outlined the advantages of a Community Trade Mark registration it has to be said that there are also some disadvantages, the most obvious of which is the fact that if the trade mark is for one reason or another not available for registration in any one country of the European Union then the application for registration will fail.

The Community Trade Mark system is very much "all or nothing" and there may be some difficulty in attempting to select a mark which is available for use and registration in every country of the community. Also, the risk of encountering opposition under the community system is likely to be high.

WORLD INETELLECTUAL PROPERTY ORGANISATION (WIPO)

The purpose of the system is to enable trade mark proprietors to file a single application for registration at a central office and to designate any number of member countries in which protection is sought. Whilst South Africa is not a member of the system, South Africans who are nationals or who are domiciled in a member state, or who have a real and effective industrial or commercial establishment in a member state, can use the system to obtain trade mark protection. It is anticipated that South Africa will join the Madrid System in 2009.

NATIONAL REGISTRATIONS

National registrations are possible in most countries, including those countries that are members of the European Union or the Madrid System. Further information regarding specific countries is available upon request.