Leg. Dev.: Trademark Protection, Etc.

1 Colum. J. Eur. L. 143 (1994)

Jan Vanhamme. Researcher, Institute for European Law, Catholic University, Leuven, Belgium.

In 1989, the Community adopted a directive harmonizing national trademark laws: Directive to approximate the laws of the Member States relating to trade marks, 89/104/EEC, 1989 OJ (L 40). The next step in protection of trademarks in the Community has now been completed with the adoption of Regulation 40/94 of December 20, 1993 on the Community Trademark, 1994 OJ (L 11), which entered into force on March 15, 1994. Regulation 40/94 contains the substantive and procedural rules necessary for the registration and continuing effect of a Community trademark, that is, a trademark considered valid throughout the Community upon its filing with and acceptance by the competent office (Article 1). The “competent office” is either the central industrial property office of a single Member State or the newly   established Community    Trademark  Office  (the  Office   for Harmonization in the Internal Market) situated in Alicante, Spain (Article 2). The Community Trademark Office has sole authority to issue Community trademarks (Article 25), and if an application for a Community trademark is filed with a national trademark office, this office is required to forward the application to the Community Trademark Office.

Decisions from the Community Trademark Office may be appealed to a “Board of Appeal” (Article 57), whose decisions may be brought before the Court of Justice (Article 62). The Member States still have the power to issue national trademarks, but the validity of such trademarks is limited to the issuing state’s geographical territory.

According to the regulation, the priority and filing date of an application is determined by the date on which therelevant documents are received at either the national or Community Trademark Office (Article 27). However, an applicant may claim an earlier priority date based on an earlier-filed national application, provided that the national filing took place no more than six months prior to the filing of the Community trademark application (Article 29). This creates a certain grace period during which an applicant may convert a national application into an application for a Community trademark. Priority of a trademark already registered in a Member State may also be claimed by its owner in an application for an identical Community trademark. The result in that case is geographically uneven: the Community trademark will enjoy priority throughout the Community according to the date of filing of the Community application, but it will enjoy priority according to national trademark law in the particular Member State where it had previously been registered. In that state, the national mark will be allowed to lapse and the rights held under it will be extended to the Community trademark (Article 34).

Upon filing, the Community Trademark Office will search only its own register for potentially conflicting trademarks. At the same time, copies of the application will be sent to the Member States central industrial property offices, which then have three months in which to search out and report on conflicting national marks (Article 39).

An important substantive rule laid down by the regulation is that opposition to a trademark may be based upon the existence of trademarks acquired through use. However, such opposition will only be permitted to the extent that the laws of the Member State in which the opposing mark is already in use allow an application in opposition to be filed on that basis (Article 42 in conjunction with Article 8).

Adoption of the trademark protection regulation represents an important advance in European trademark law. The introduction of a Community-wide trademark will bring significant benefits, notably the possibility of submitting one application for a trademark covering the entire Community. The benefits of the Community trademark system will further increase once trademark applications within the Community typically take the form of applications for a Community trademark, and once national registers accordingly diminish in size and importance. This should lessen the coordination problems associated with the existence of parallel registers.