2. Questions on the Application Procedure

CTM applications can be filed either directly at the OHIM or at any of the central industrial property offices (that is to say, the national patent and trade mark offices) of the 27 Member States of the Community or the Benelux Trade Mark Office. An application filed at a national office or the Benelux Trade Mark Office and forwarded to the OHIM within two months will receive a filing date as though it had been filed directly in Alicante .

Direct filing at the OHIM is possible through any of the following means:

e-filing: on-line application
sending by regular mail,
sending via private delivery services,
handing in the application personally at the reception of the Office, during the opening hours (8.30 --> 13.30; 15.00 --> 17.00) ,
transmission by telefax, (+34 965 131 344).

In case of a filing by fax, it is not necessary to send a confirmation copy. It is in fact strongly recommended not to send such confirmation copies. The facsimile signature appearing on the telecopy is equivalent to an original signature.

2.A.3 Can I file an application via e-mail?

No. Applications can be submitted electronically from the Office’s website (e-filing), by fax and by post. No document intended for a specific file is accepted via e-mail.

2.A.4 Can I file an application by fax even if the mark is in colour?

Yes, you can. Remember to send the original representation of your mark by post and within one month from the date on which you faxed your CTM application.

2.A.5. Must an official form be used?

The use of the official form made available by the Office is not obligatory but strongly recommended. The current form may be obtained from the Office (information section + 34 96 51 39 100). An electronic version in PDF format is available from this Website.

Applicants may use forms of a similar structure or format, such as forms generated by computers on the basis of the information contained in the official form.

2.A.6. In which language must the application be filed?

The CTM application must be filed in any of the 22 languages of the European Community: the "first language". In addition, a second language must be indicated which must be different from the first language and must be one of the five languages of the Office, namely, Spanish, German, English, French or Italian.

A different language version of the form from the language chosen as the first language may be used. However, the form must necessarily be completed in the first language chosen.

The second language serves as a language for opposition and cancellation proceedings.

2.A.7. I have to choose a second language. Can this be the same as the first language?

No, it cannot. The second language must be one of the five languages of the Office (ES, DE, EN, FR or IT) and must be different from the first language.

2.A.8. What is the filing date of a CTM application?

The filing date of a CTM application is the date on which it was actually received at the OHIM (or, in the case of a filing through a national office including the Benelux Trade Mark Office, the date of actual receipt at that Office), provided that the application contains, and is accompanied by the following:

a request for the registration of a CTM, that is to say the indication that a CTM (and not another industrial property right) is sought;
information identifying the applicant;
a list of the goods or services in respect of which the registration is requested;
a graphic representation of the trade mark;
the payment of the basic fee, within one month from the date of receipt at the OHIM or the national office.

Holders of a current account will be automatically charged with the basic fee unless instruction is given not to debit the current account with the fee. If the applicant checks, in the application form, "payment by transfer", this will constitute an express instruction not to debit the current account.

2.A.9.What happens if one of the filing date requirements is not fulfilled?

The filing date will either be later than the date of actual receipt of the application at the Office or will be denied altogether. The OHIM will issue an invitation to comply with the missing requirements within a period of 2 months. If that invitation is complied with, the filing date of the application will become the date on which the last requirement is fulfilled. If the invitation is not complied with, the documents will not be treated as a CTM application.

2.A.10 Can I add another class after having filed my application?

The original list of goods and services included in a CTM application cannot be extended but only limited. In other words, you cannot add products or classes to the application originally filed. You can file a new application for the same trade mark comprising the additional classes.

2.A.11 Can I alter my mark after having filed my application?

Only minor alterations to the mark representation itself can be made, provided they do not substantially change the mark. The list of goods and services can be limited at any moment. Applicant’s name and address can be corrected.

You can withdraw your application but the fees, if paid, will not be reimbursed.
The Office does not have a form for the withdrawal of a CTM application, so it is sufficient to send a fax to the general fax number of the OHIM or a letter (e-mails are not accepted). There is no fee for this. The declaration should be in clear and unambiguous terms, such as ‘I withdraw CTM application number XYZ’ .

2.A.13 Can I claim priority after filing the application?

Yes, you have two months from the filing date to claim priority from a first filing.

2.A.14 Can I claim seniority after filing the application?

Yes, you have two months from the filing date to claim seniority from an earlier registration. If your earlier trade mark has not been registered at the time you send your CTM application, you can still claim seniority at any time once the CTM has been registered.

2.A.15 Can I file now and designate a representative at a later stage?

Yes, this is possible. The Office will send you a deficiency letter requesting the appointment of a representative within a time limit if you are filing from outside the EU.

2.A.16 What documents do I have to submit for my priority claim?

The priority document can consist of a certified copy of the prior application (or a complete copy thereof), a copy of the official filing receipt issued by the national IP Office (or the Benelux Office) – provided this contains all necessary data to examine the claim – or a printout of the official database of the Office of the first filing – again, provided this contains all necessary data to examine the claim (applicant, filing date, application number, country, trade mark, detailed list of goods and services).

In some cases the examiner will be able to check these data directly online. For more information, you can see the Decision of the President EX-05.

If the priority document is not in any of the 22 languages of the European Union a translation has to be filed (this translation does not have to be a sworn translation).

2.A.17 What documents do I have to submit for my seniority claim?

Pursuant to Decision No EX-05-5, the applicant is not required to file a copy of the registration if the required information is available to the Office on the website of the respective national Office. If the copy of the registration is not submitted, the examiner will thus first seek it on the respective website himself and only if the information is not available, he will ask for it.

Pursuant to Article 3 of Decision No EX-03-5, the copy of the relevant registration must consist of a copy (simply photocopies suffice) of the registration or renewal certificate or extract from the register, or an extract from the relevant national Gazette, or an extract or printout from an official database.

2.A.18 When will I receive a confirmation for my application?

When you file your application electronically, the official receipt containing the file number will appear on the screen of your computer immediately after you have submitted the application. When you use the paper application form you will receive the official receipt by fax or post later

2.B Questions on the CTM Application form

2.B.1 What is the difference between the applicant’s reference and ID number?

Applicants or representatives may indicate their own reference of no more than 20 characters in the space provided e.g.: initials, string of letters, digits etc. Such a reference can be useful for you to distinguish different applications you filed at the Office.

An “ID number” is a number allocated by the Office for identifying applicants and representatives. When the applicant or representative has been allocated an identification number by the OHIM already, it is sufficient to indicate that ID number. Without an ID number, all applicants/representatives fields have to be filled out. You can find the ID numbers when you look at your trade mark in one of the Office’s online databases, TMview, eSearch Plus or CTM-ONLINE.

2.B.2 What is a word mark?

A word mark is a typewritten mark (regular font), with elements including letters, words, numerals, keyboard signs, and punctuation marks. The mark must be typed in the "Representation of the word mark" field. The Office will publish the mark applied for as it appears in the application form (capital and/or small letters and/or other signs), using the Office's standard font. Any text written in a non-EU alphabet or in a mixture of different alphabets has to be filed as a figurative mark.

2.B.3What is a figurative mark?

A figurative mark is a mark consisting of exclusively figurative elements, combinations of verbal and figurative or other graphical elements, verbal elements in stylized fonts, or verbal elements on more than one line (for all of which, the elements may be in colour or otherwise) or consisting of exclusively verbal elements in colour and any combination of the aforesaid. Any text written in a non-EU alphabet or in a mixture of different alphabets has to be filed as a figurative mark. Figurative marks include so-called “device marks”, “text and logo marks” and “combination marks” etc. When you send your mark representation in colour you have to indicate the colours in words in the “Indication of colour(s)” field on the application form; you may add colour codes.

2.B.4 What is a three-dimensional mark?

A three-dimensional mark is a mark consisting of a three-dimensional shape (including containers, packaging and the product itself). The representation supplied in the attachment may consist of up to six representations of the shape. The views of a three-dimensional mark (up to 6) have to be attached as one document (jpeg). When you send your mark representation in colour you have to indicate the colours in words in the “Indication of colour(s)” field on the application form; you may add colour codes.

2.B.5 What is a sound mark?

A sound mark must be represented graphically by means of an attachment using the standard methods for reproducing sound graphically, such as musical notations. The attachment of an additional MP3 sound file (maximum size 2MB) is optional but only possible in e-filings. A description of the sound in words is not sufficient.

2.B.6 What is colour per se?

Colour per se means that trade mark protection is sought for one colour or several colours, regardless of any specific shape or configuration. The colour(s) must be indicated in the "Indication of Colour(s)" field. The indication must be in words and the addition of standard international colour codes is recommended.

2.B.7 What if my mark contains both text and a figurative element?

It is a figurative mark.

2.B.8 If my mark contains both text and a figurative element, do I have protection for each the text and also for the figurative element?

No, what is protected is the combination of both as seen on the mark representation as a whole.

2.B.9 What box do I tick if my “word mark” is in colour?

Figurative mark.

2.B.10 If my mark is in colour, do I have to claim the colour(s) and how?

Yes, you must claim the colour(s) by simply indicating the colour(s) in words.
If in addition to the colour indication (e.g. blue, red, green) you decide to use the international colour codes but you do not know which, you should check with a print shop as the OHIM does not provide this information.
When you apply for colour per se, the colours can simply be indicated in words; the addition of a recognised international colour code is optional. In fact, the Office recommends the indication of such a code but failure to do so will not constitute a ground for refusal on its own. Guidelines, Part B: Examination, 2.7. Representation of the mark.

2.B.11 What is a disclaimer?

A disclaimer is a statement by the applicant that he disclaims any exclusive right to an element of the trade mark which is not distinctive. This is not a mandatory field of the CTM application.

2.B.12 How many copies of the representation of a figurative mark do I have to send?

Only one representation of the figurative mark has to be provided.

2.B.13 What is a mark description?

A mark description can only describe what you see when you look at the mark representation, or what you hear when you listen to a sound mark, etc. It is not an interpretation of the mark and not a description of how or for what goods and services the mark shall be used.

2.B.14 What is the Nice Classification?

The Nice Classification is a classification of goods and services for the purposes of registering trade marks and service marks. The “Nice Classification of Goods and Services for the Purposes of the Registration of Marks” serves to determine the scope of protection of trade marks. Its use is mandatory for applicants of a Community Trade Mark.

2.B.15 How can I know how to classify my goods and services?

The list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services, and to allow each item to be classified - preferably in only one class of the Nice Classification.

To find out to which class a product or service belongs, please use our TMClass search tool. The Nice Classification guide gives general information about the type of product or service and allows the correct classification in class numbers. You can also consult the Classification Guidelines.

Where there is a need to amend the classification the applicant will be advised either to file a correct classification or to agree to the examiner’s proposal within two months, failing which the application will be refused. The refusal will relate only to those goods or services which are disputed by the examiner.

2.B.16 What is a collective mark and who can apply for a collective mark?

Depending on the nature of the owner, Community Trade Marks (CTM) can be classified in two categories: individual or collective CTM.
Firstly, please note that “collective” does neither mean that the mark belongs to several persons (co-applicants/co-owners) nor that it designates/covers more than one country (the CTM system covers automatically all EU countries).
Individual trade marks can be owned by one legal or natural person or by more than one legal or natural person. If there is more than one person, this is known as a multiple applicants. Therefore it is possible to have an individual trade mark owned by multiple applicants.
A collective mark can be any mark (e.g. word, figurative, 3D, etc.), provided that it belongs to a legal person of public law or to an association and it is used to distinguish the goods and services of the members of that association from those of other undertakings.
Only associations of manufacturers, producers, suppliers of services or traders, as well as legal persons governed by public law, may apply for Community collective marks.
Under the CTM Regulation (CTMR), there are specific provisions on the protection of collective marks.
Being an indication to serve to designate geographical origin of the goods or services is not an obstacle for the registration of a collective mark. This is in contrast to an individual CTM where a geographical indication cannot be registered for being descriptive.
An applicant for a collective mark is requested to submit regulations governing its use, otherwise the application will be refused.
Application fee EUR 1800. If your application has more than three classes of goods and services there is an additional fee of EUR 300 for each class exceeding three.
You can use a collective mark in order to publicise products which are characteristic of your region. Collective marks may be used together with the individual trade mark of the producer of a given good. This allows companies to differentiate their own products from those of competitors, while at the same time benefiting from the confidence of the consumers in products or services offered under the collective mark.

2.B.17 If I file a collective mark online (via e-filing), will I benefit from a reduction on the basic fee?

No, the basic fee of EUR 1800 is the same for both e-filing and filing on the paper form (post/fax).