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Protect your trade marks and designs in the European Union

Protect your intellectual property in the European Union

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Looking after your rights

'A Community trade mark confers on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having consent from using it in the course of trade.'

Article 9 of the CTM Regulation

Enforcing your trade mark is as important as brand building. If you don't do it, the validity of your mark may be questioned and your brand will lose value.

You are responsible for enforcing your registered trade mark. To do this effectively you must do the following

  • Ensure your trade mark is correctly registered for the goods and services you trade in
  • Be vigilant. A registered trade mark will warn competitors that you have a right but if someone uses your trade mark, or one like it, without permission, it's up to you to take action to stop them

OHIM is responsible for registering Community trade marks and designs.

OHIM is not an enforcement agency, so we cannot provide legal advice on enforcing trade marks or designs.


The registers

Make sure no one tries to protect an identical or similar trade mark.

Search trade mark registers for trade mark applications or registrations that are identical or similar to yours.

We offer a search tool for CTM applications and registrations. Registered users can configure automatic watch alerts and receive a notification whenever potentially conflicting trade mark applications are received at OHIM.

TMview is a trade mark search engine that can search for both CTMs and national applications and registrations in the EU Member States.

If you are unable to conduct your own searches, professional trade mark watching services are provided by legal professionals.

If you discover a competitor has applied to register, or has registered, a mark that is similar or identical to your own, you can enforce your earlier right and oppose or cancel the trade mark registration.

It's up to you to take action.

The market

Ensure nobody uses your trade mark in the market.

Monitor the marketplace by checking the press, trade publications and the web for companies using your trade mark without authorisation. It may be that illegal copies of your products are on sale or that competitors are using marks that are similar, but not identical, to your CTM. In both cases you are entitled to enforce your rights.

Remember, illegal use of your mark can be both on physical goods of the type that you produce and on related websites used to promote sales.

Consider making an application for infringement protection with your national customs authority. Border control officers use these databases to highlight potential infringements and seize counterfeit goods.

Registered users of Community trade marks can prepare an application for customs protection online in their user area.

If you find irregularities in the market, online, or at EU border agencies we strongly recommend you to first seek legal advice.

It's up to you to take action.

At OHIM and national registries

Oppose an application or cancel a registration for identical or similar trade marks.


Opposition

As soon as your CTM application has a filing date you can oppose CTMs and national registrations in the European Union filed after that date.
To protect your rights make regular searches for CTM applications and national registrations and look online for evidence from the marketplace. Trade mark attorneys and monitoring services can help you by conducting searches and providing advice.


Cancellation

Registered Community and national trade mark registrations in the European Union can be cancelled. If you think an existing registration conflicts with your earlier right, or if you think a registration is invalid, you can request that it be cancelled.

A request for cancellation costs €700 and should be made on the following form. The help file to the form can also be downloaded.

In the courts and in business

Act against the infringer

We advise you to contact a legal practitioner before taking any action in a dispute.


Inform the alleged infringer – 'Cease and desist' letters

Once an infringement has been detected, consider sending a 'cease and desist letter', informing your competitor about the conflict. This makes your competitor officially aware of your rights and lets them know that if they continue to disregard your rights they might face further action.


Negotiate

In some cases you may be able to negotiate a settlement through mediation and arbitration. These services are suited to disputes between legitimate businesses where both sides are looking for cost-effective and practical solutions.


Civil law measures

If your attempts to warn or negotiate with the alleged infringer fail, there are other legal measures available to combat infringements such as preliminary injunctions and precautionary seizures to prevent illegal use of your trade mark. In all cases, enforcement action under civil law must be brought at national level in the relevant EU jurisdictions. However, one advantage of the CTM is that one court is competent to order such a measure in all Member States.


Criminal law measures

Measures under criminal law apply when counterfeiting and piracy activities are involved. You will need to contact national enforcement and prosecution authorities in the relevant EU jurisdiction.

Please note that criminal law enforcement rules for intellectual property have not been harmonised in the EU. Enforcement actions under criminal law are brought at national level using the relevant national law. As a result, the options available at European level for criminal law enforcement vary considerably and it is not always possible to apply criminal law enforcement measures in the same way in every country.

If you are asked to prove the existence of your CTM in court proceedings you can obtain an uncertified or certified copy of your registration through your user area.

Page last updated 13-03-2014