Guide to Registration of European Community Tradeamrks (3) - After registration of a Community Mark

The effects of registration begin on the publication date of the registration for a term of 10 years from the application date that may be renewed any number of times.

Renewal

The renewal of the registration must contain neither modification of the sign nor extension of the list of goods and/or services, a limitation being nevertheless possible.

Mark use

According to Article 15 of the Council Regulation on Community Trade Mark n?40/94, the owner who has not put his mark to genuine use in the Community in connection with the goods and/or services referred to in the registration during an uninterrupted period of 5 years from the registration date, without good reason, shall be liable to revocation of his rights.

The use concerns the mark as registered, but slight modifications which do not alter the distinctive nature are possible. The use concerns the goods and/or services referred to in the registration. A partial revocation is then possible if the owner uses his mark only for a part of the goods and/or services referred to in the registration. The use for similar products (as clothing and shoes) is insufficient.

The use may not be proven in all member states of the European Community.

It is of importance to be able to provide, at any time, evidences of use (as catalogues or advertising from different years...).

Revocation of a mark that has become common

When a product is new, it is often named with its mark. For example, one says a "thermos" instead of an "isolated bottle". The owner has to prevent his mark from becoming the common name of the product or service. If he does not persue, he is liable to revocation of his rights according to article 50.

Application for a revocation or for a declaration of invalidity

According to Article 55, a registered Community trademark may be the object of an application for revocation of the rights of the proprietor or for a declaration that the trade mark is invalid, this being submitted to the Office.

Foreclosure by tolerance

Article 53 provides that the owner of a Community mark or of a national right cannot proceed for infringement against a later registered Community mark if he has tolerated its use for 5 years. A mark which first seems to have a small scope of activity can always grow up lately. A late infringement proceeding will then not be admissible.

Watching over the mark applications

It is highly recommended to watch up the filing publications of marks having effect in the Community States : National marks, Community marks and international marks designating Community States. We can follow these publications and warn you when an opposition may be done against the registration of an identical or similar mark application.

Seniority of a national mark

After the registration of a Community trademark, it is still possible to claim the seniority of a national trademark having effect in one of the Community States.

Opposability to third persons

Any transfer or licensing concerning the Community mark shall be recorded as soon as possible in the Register of Marks in order to always have effects against others. Any other modification in the name, address... of the owner shall be indicated to the Office.