Since 1994, the European Union’s trademark office – the Office for Harmonization in the Internal Market (OHIM) – has provided trademark owners a centralized and cost-effective registration system for securing trademark protection throughout all of the EU’s member states. The OHIM recently announced a major improvement, an optional “Fast Track” procedure intended to significantly accelerate the processing of eligible applications, at no additional cost.
The OHIM is the registering authority for the Community Trade Mark (CTM). With a CTM registration, a trademark owner can secure protection across all 28 member states of the EU at relatively little expense. The cost of a CTM application, which starts at €900 (about US$1100), is significantly lower than the cost of applying for national trademark registration in even a handful of the EU member states. In most instances, too, CTM protection automatically extends to new member states as they are admitted to the Union. (The most significant downside to the CTM process is that a third party with trademark rights in even just one of the member states can block a CTM application for a confusingly similar mark.)
Already the processing of CTM applications is relatively fast. As with U.S. trademark applications, prosecution consists of an examination period as well as an opposition period. However, unlike the U.S. Patent and Trademark Office (USPTO), the OHIM does not review applications against prior registrations to assess whether the registration of applied-for marks is likely to cause confusion. For this reason, the examination period for CTM applications can be quite short, averaging only eight to 11 weeks. By contrast, the USPTO typically does not even assign an examining attorney to review an application until 12 weeks after its submission.
Once examination satisfactorily concludes, the OHIM publishes the approved (or “allowed”) application in its Community Trademark Bulletin in all of the official languages of the EU. This event is known as “publication” and is analogous to the USPTO’s publication of allowed trademarks in its Official Gazette. Publication provides notice to third parties of pending applications, giving them an opportunity to oppose registration. For CTM applications, third parties have three months from the date of publication to file a notice of opposition to registration. (In the U.S., the opposition period is just 30 days, but it is extendable.)
The OHIM’s new Fast Track procedure, which will be available November 24, will not affect the three-month opposition period for CTM applications, but it will make the examination period twice as fast, if not faster, according to the OHIM. To qualify for the Fast Track procedure, CTM applicants must select goods and services from OHIM’s database of pre-validated and pre-translated terms. Applicants must also immediately pay for their applications. (Applicants outside of the EU must be represented by EU counsel or an OHIM-approved representative to register a Community Trade Mark.)
Once accepted, applications may be derailed off the Fast Track for late payment, or if a limitation of the goods or services is required, or if other objections arise during the examination period (e.g., if the applied-for mark is not sufficiently distinctive).
The CTM system is already a cost-effective and efficient means of securing comprehensive trademark protection across the EU. If it works as promised, for CTM applicants willing to limit themselves to the OHIM’s sanctioned identifications of goods and services, the new Fast Track procedure could improve the CTM system significantly.