Legal regulation of registration of European trade mark

Zeleniuk Anastasiia. Legal regulation of registration of European trade mark

This article deals with the procedural features of registration of Community trade marks, main specifications for signs, subject to registration and the rights provided by registration of Community trade mark (CTM). The author has analyzed the provisions of European Union legal acts in force, governing functioning of trade marks in Europe as well as judgments of the Court of Justice of the European Union concerning issues of registration of Community trade mark with the Office for Harmonization in the Internal Market (OHIM).

The author has analyzed the latest proposals by the EU Commission drafted in order to update the current EU trade mark framework and address the inconsistencies that exist between the EU Trade Mark Directive 2008/95/EC and the EU Trade Mark Regulation 207/2009/EC.

Special attention is given to requirements for signs, subject to registration, especially to the requirement of graphical representation of signs. With the challenges arising in the digital environment, this approach becomes more and more questionable. Such requirement complicates the registration of so-called “unconventional” trademarks such as those consisting of smell, sound, melody, taste or colour, that cannot be graphically represented and as a result cannot be registered, according to traditional interpretation of the CTM Regulation. But the recent practice of the Court of Justice of the EU proves the opposite, stating conditions under which such trademarks may be registered with the Office for Harmonization in the Internal Market. Such conditions arising from precedents were also analyzed.

This article also highlights the rights provided to the owners of European trademarks.

Along with the rights the article stresses on the obligation of the owner to put its trademark to genuine use, violation of which may lead to revocation of trademark.

It is also emphasized on procedure of registration of Community trademarks. In particular, it was analyzed the possibility of application for registration of Community trade marks by Ukrainian entrepreneurs. It is also studied that the applicant may use the right of priority during a period of six months from the date of filing of the first application. The priority is based on prior application of any State party to the Paris Convention or to the Agreement establishing the World Trade Organisation. It is also stated, that along with the priority, the proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as a Community trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the Community trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.

The author has determined the main stages of the registration process with the Office for harmonization in the internal market as well as main requirements for application for Community trade mark.

Attention is given also to the procedures of opposition, revocation and declaration of invalidity of a Community trademarks. It is also emphasized that prior to the registration of the trade mark applicant may withdraw his application, modify it or reduce its content. In addition, the applicant has the right to split the application into several separate applications, objects of which shall be relevant goods or services of the first application.

This article contains actual information as to legal nature and registration procedure of European trade marks and may be interesting to researchers and professionals engaged in intellectual property law, especially in European trademark law.

Key words: Community trade mark; Office for harmonization in the internal market; the right of priority; seniority of national trade mark; genuine use; graphical representation.

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