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Differences between a CTM and an International Registration (IR) designating the EU

Legal and practical differences between routes Direct CTM IR designating the EU
Persons who can be proprietors Art. 5 CTMR

Any natural or legal person		 Art. 2 (1) (i) MP

National of a Contracting State, or domiciled in a contracting State or having an effective industrial or commercial establishment in a Contracting State of the Protocol
Languages Art. 119 CTMR

- 1st from the official languages of the EC;
- 2nd from the 5 of OHIM (and different from the 1st) *		 Art. 145 CTMR, R 126 CTMIR, R. 9 (5)(g)(ii) CR

- 1st language = language of the IA which is always a language of OHIM;
- 2nd from the 4 remaining languages of OHIM
Translations of list of goods and services Art. 120, 121 CTMR, R. 85 (5) CTMIR

In all official languages of the EC		 Art. 152 CTMR

Re-publication in Part M1 limited to Class numbers, no multilingual elements re-published and no translations needed
Priority Art. 29 CTMR, R. 6 CTMIR

A priority claim can be made in the CTMA or within a two-month period of the filing date		 Art. 4 (2) MP, R. 9(4)(a)(iv) CR

A priority claim (normally of the basic application) can be made at the moment of filing an international application
Seniority Art. 34, 35 CTMR, R. 9 CTMIR

At the moment of filing or within 2 months thereof. Seniority can also be claimed after registration of the CTM		 Art. 34, 35 CTMR, R. 9 CTMIR

At the moment of filing or within 2 months thereof. Seniority can also be claimed after registration of the CTM
Fees Art. 2 CTMFR

Paid in Euros to OHIM, EUR 900 to file online (e-filing) or EUR 1050 if you use the paper form
 		 Art. 8 MP, Art. 11, 13 CTMFR

Paid in Swiss Francs to the IB (sometimes possible through the office of origin as well) of : - 1311 SFR the equivalent of EUR 870 -
Professional representation Art. 92-93 CTM R. 108(2), 112 (1), 114 (4) CTMIR

Rules apply in case a direct communication with OHIM is needed or in case of provisional refusal
How to file? R. 80, 82, 83 CTMIR

- forms mailed, faxed, delivered in situ
- e-filing		 R. 9(2)(a) CR

WIPO MM2 or MM3 Forms sent
- through an office of origin for IAs;
- through the office of the Contracting Party or directly to WIPO in case of subsequent designation under the Protocol

Means (mail, fax) according to OHIM’s rules
Where to file? Art. 25 CTMR

- at OHIM;
- at a national offices of an EU Member State, including Benelux		 Art. 2(2) MP, R. 1 (xvi) CR

- through an Office of Origin
Time limits for examination No time limit for AG and RG examination R. 112 (5) CTMIR, Art. 5 (2) (b) MP

- 6 months for AG;
- 18 months maximum for issuing provisional refusal on any grounds
Classification Art. 28 CTMR, R. 2 CTMIR

Examined by OHIM		 R. 9 (4) (a) (xiii), 12, 13 CR

Examined by the Office of Origin and the IB, accepted by OHIM
Formalities Art. 36 CTMR, R. 9 CTMIR

Examined by OHIM		 Art. 3 MP, R. 9 CR

Examined by the Office of Origin (not necessarily same typology of marks for example)
Absolute grounds examination Art. 37 CTMR, R.11 CTMIR

Ends by the publication of the CTMA in Part A of the Bulletin for opposition purposes		 Art. 154 CTMR, R. 112-113, 116 CTMIR

6-month period to examine AG starts by re-publication in Part M of the Bulletin of the IR designating the EC. Ends by the sending of a first Statement of Grant of Protection or a Provisional Refusal on AG
Relative grounds examination Art. 41- 42 CTMR, R. 15- 22 CTMIR

- 3-month opposition period only opens as from publication of the CTMA if and when it has been accepted on AG

- Proof of use: 5 years counted back from the publication of the CTMA for opposition		 Art. 156 CTMR, R. 114-115 CTMIR

- Fixed period to oppose from month 6 until month 9 of the first republication. Provisional refusal sent to WIPO based on existence of admissible opposition. Then, no difference in opposition procedure compared to direct route (except withdrawal of the IR done before the IB).
- Proof of use: 5 years counted back from the opening of the opposition period (6 months after the first re-publication of the IR designating the EC)
Publication Art. 39 CTMR, R.12, 84 and 85 CTMIR

CTM Bulletin:
- Part A, CTMA (applications)
- Part B, CTM (registrations)		 R. 32 CR, Art. 152 CTMR

- International Gazette (seniority details and refusals are only published there);
- CTM Bulletin Part M at 2 different moments (second language only published there)
Rights conferred against third parties Art. 9 (3) CTMR

From the date of publication of the registration of the CTM
- Reasonable compensation for matters arising after the publication of the CTMA in certain cases		 Art. 151 (3) CTMR

- From the date of the second re-publication of the IR designating the EC in the Bulletin
- Reasonable compensation for matters arising after the first re-publication of the IR designating the EC in the Bulletin
Register, recordals and certificates of registration Art. 120 CTMR, R. 24, 84 CTMIR

CTM Register kept by OHIM		 Art. 5 ter, 9 bis MP, R. 14 CR

International Register kept by the IB
Inspection of files R. 89 (2) CTMIR

Inspection after publication of CTMA		 R. 89 (2) CTMIR

Inspection after re- publication of IR (before AG examination)
Use requirements Art. 15, Art. 42 (2,), Art. 51 and Art. 57 (2) CTMR

5 years from Registration Date		 Art. 160 CTMR

5 years from the date of the second re-publication
Dependence N/A Art. 6 (3) MP

Dependence between the IR and the basic mark during 5 years from the date of the IR
Conversion Art. 112 CTMR

- conversion into national marks		 Art. 159 CTMR, R 122, 123 CTMIR, Art. 2 (20) MP, R. 24 (2)(a)(ii), (6), (7) CR

- conversion into national marks;
- “opting back” into designations of Member States
Division Art. 44, 49 CTMR, Rule 13a, 25a CTMIR

Possibility of division of the CTMA or of the CTM		 N/A

Abbreviations:
AG =Absolute grounds for refusal
Art. =Article
CR = Common Regulations
CTM = Community Trade Mark
CTMA = Community Trade Mark Application
CTMFR= Community Trade Mark Fee Regulation
CTMIR = Community Trade Mark Implementing Regulation
CTMR = Community Trade Mark Regulation
EN = English
EU = European Union
FR = French
IA = International Application
IB = International Bureau
IR =International Registration
MP = Madrid Protocol
MS = Madrid System
NA = Non Applicable
OHIM = Office for Harmonization in the Internal Market
RG = Relative grounds for refusal
R. = Rule
SP = Spanish
* 22 languages (Irish will be used as from 2012).