Global Trademark Strategy – European Community Trademark

Mark A. Wright
Director and Chair, Intellectual Property Practice Group
October 19, 1999

Trademark protection stops at the border – Does your product?

In some countries, the first party to use a trademark or service mark has ownership rights in the mark, whether or not it is registered. This type of ownership occurs in common-law countries, such as the United States, Canada and the United Kingdom. In most other countries, however, the first party to register a mark obtains ownership rights to the mark. All too often, successful companies who distribute and sell products abroad fail to consider the protection and registration of trademarks outside the United States. If a U.S. company is selling or intending to sell products or provide services in other countries, the company should consider international trademark protection.

Trademark Protection throughout the European Union – European Community Trademark

It is no longer necessary to register trademarks separately in individual European countries to obtain trademark protection throughout the European Union. Prior to 1996, the only way to protect a trademark in all fifteen countries that comprise the European Union was to register a trademark in each country, a process that was time consuming and expensive. Now, through a single Community Trademark Registration, a company can now obtain registration rights in the following 15 countries in the European Union: Austria, Finland, Greece, Luxembourg, Spain, Belgium, France, Ireland the Netherlands, Sweden, Denmark, Germany, Italy, Portugal, and the United Kingdom.

The primary advantages of filing for a Community Trademark are:

  • A single application gives the owner rights in all 15 European Union countries.
  • Lower trademark filing fees and renewal costs.
  • Use of the trademark is just one of the European Union countries will suffice as use in all 15 countries and constitutes a defense against cancellation on the grounds of non-use.

United States companies also benefit from the Community Trademark registration system. Because the United States is a signatory to the Paris Convention (the principal international treaty governing patents, trademarks, and unfair competition), a United States company can participate in the Community Trademark registration system without having a place of business in Europe.

The main disadvantage of the Community Trademark system is that a successful opposition in one of the 15 European Union countries can defeat the Community Trademark application. However, if a challenge occurs, it is possible to convert a Community Trademark application into one or more separate European national applications in individual countries while preserving the filing date.

Is a Community Trademark Worthwhile?

Deciding whether and when to apply for a Community Trademark registration, individual national registrations, or both will depend on several factors. Some general guidelines, however, may be helpful to consider:

  1. For companies with national registrations in Europe and use in all or some countries where registered and without an intention to expand outside current markets, a Community Trademark registration would probably be of only marginal benefit.
  2. For companies with national registrations in Europe and use in all or some countries where registered and with an intention to expand outside current market areas, a Community Trademark registration would probably be worthwhile to protect rights to use the mark in future countries, particularly those where the mark is not already registered.
  3. For companies with new or unregistered marks, a Community Trademark registration may be preferable to filing several separate national registrations.
  4. For companies aware of potentially conflicting marks, a Community Trademark registration or additional national registrations appear worthwhile to reserve rights in countries where the potentially conflicting mark is not yet used or registered.

There are a number of strategic considerations in obtaining foreign trademark protection. One should consider the tremendous advantages in obtaining such protection and the risk of losing all trademark rights in the absence of registration. Obtaining trademark protection abroad is an integral part of my international marketing plan and may be an essential element to successful international expansion.