1) Parties who are nationals of, or have their domicile, seat or real and effective industrial or commercial establishment in the European Union or a member country of the Paris Convention or the World Trade Organization Agreement may apply to register a Community Trademark. Others parties may also apply provided that their home countries accord reciprocity to all members of the EU.

2) A six-month right of priority may be claimed by an applicant based on their first application filed in a member country of the Paris Convention or the World Trade Organization Agreement.

3) In accordance with the provisions of the GATT-TRIPS obligations, the definition of unregistrable marks includes marks which contain or consist of a geographical indication when such marks are used to identify wines or spirits that do not have that origin.

4) Applications may be filed in respect of the International Classification of Goods and Services in any of the eleven EU official languages (Danish, Dutch, English, Finnish, French, German, Greek, Italian, Portuguese, Spanish and Swedish) but the applicant must designate a second Office language (i.e., either English, French, German, Italian or Spanish) in which proceedings may be conducted. Ex officio proceedings will be conducted in the language of the application, although the Office may send written communications in the second language of the application if the application was filed in a non-Office language. Inter partes actions may be filed in any Office language, but proceedings will be conducted in the language in which the inter partes action documents were filed, provided that such language is also either the first or second language of the application. Otherwise, the inter partes proceedings will be conducted in the language of the application (or the second language of the application if the application was filed in a non-Office language) and the opponents must translate their documents into that language. Alternatively, the proceedings may be conducted in any official EU language to which the parties agree.

5) Owners of earlier national registrations who apply for a Community Trademark in respect of the identical goods or services covered by the national registrations may claim the seniority of the national registrations in the EU member states in which the mark is registered. Trademark owners may then, in most cases, allow their national registrations to lapse, since they will be considered to have the same rights as they would have had if the earlier national registrations had continued to be registered. Seniority may be claimed either at the time of filing or after registration of the Community Trademark.

6) Applications will be examined by the Office as to form and inherent registrability. The Office will consider arguments based on acquired distinctiveness through use in reply to an inherent registrability objection.

7) The Office will also prepare a search report listing possible conflicting Community Trademark rights. The national offices of the EU Member States may also issue search reports listing anticipatory references revealed on their own Trademark Registers. So far, all EU member states, except Germany, France, Italy and Austria, have indicated that they will provide national search reports. The search reports will be forwarded to the applicant for review, but no official objections will be based thereon. When the application is published for opposition, the Office will notify the owners of prior Community Trademark rights listed in the search report, but the Office will not notify owners of earlier national rights. Accordingly, it will be all the more important now for owners of national rights to subscribe to a Watch Service in order to receive notice of potential conflicting Community Trademark applications.

8) Third parties may, within 3 months of the date of publication in the Official Gazette, file with the Office observations stating why an application should be refused ex officio on absolute grounds (e.g. on the ground of inherent unregistrability), but not on the ground of prior conflicting rights.

9) Owners of earlier rights (including those listed below) may, within 3 months of the date of publication in the Official Gazette, file with the Office a notice of opposition against a Community Trademark application on the following grounds:

10)Earlier marks which possess a substantial reputation may prevent registration of similar marks for dissimilar goods or services.

11) The decisions of the Registrar may be appealed to the Board of Appeals and a further appeal will be available to the European Court of Justice.

12) The owner of a Community Trademark application or registration in respect of which a final decision of rejection is issued may, within 3 months of such decision, file with the Office a request, together with the appropriate fee, to convert the Community Trademark application or registration to individual EU national applications, retaining the priority date of the Community Trademark application. The Office will then forward such requests to the national offices designated, which may elect to charge a conversion fee.

13) A Community Trademark shall be registered for a period of 10 years from the date of filing and shall be renewable for additional 10-year periods.

14) Community Trademark registrations may be assigned without the goodwill of the mark and the licensing of, and creation of security interests against, such marks is recognized. Licenses, which may be granted in respect of some or all of the registered goods and in respect of the whole or part of the EU, and agreements affecting the title of a Community Trademark registration, must be recorded at the Office to be effective against third parties. Proprietary rights in a Community Trademark are governed by the national law of the EU Member State where the proprietor has a seat, domicile or establishment; if the proprietor has no seat, domicile or establishment in a member state, proprietary rights are governed by the law of the country where the Office is located, namely, Spanish law.

15) A Community Trademark registration may be vulnerable to attack in a proceeding before the Office if the registered mark is not used, without justification, for any period of 5 years from the date of registration. Subsequent use will cure the defect, unless such use was resumed within 3 months of the filing date of the cancellation action and the registrant was aware of the possible attack. An opposition, cancellation action or infringement action based upon a Community Trademark registration may be defended by successfully claiming that the registered mark has not satisfied the user requirement. Use of a Community Trademark in any one country of the EU will be sufficient to satisfy the user requirements in all of the jurisdictions. Use of a mark on goods only for export constitutes valid use.

16) Each Member State must designate the court(s) in its territory which shall have competence to hear Community Trademark disputes. Actions for infringement of a Community Trademark registration may be brought before the designated national Community Trademark courts. The proper venue for such actions will be the Member State in which the infringement occurred, or, in the following order:


unless the parties agree that a different designated Community Trademark national court shall have jurisdiction or the defendant enters an appearance in a designated Community Trademark national court. The proceedings will be governed by the laws of the country where the suit is instituted.

17) The owner of a Community Trademark registration may not bring an action against the owner of a subsequent conflicting mark if the former knowingly acquiesced to the use of the latter's mark for a period of 5 years.