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Protect your intellectual property in the European Union

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Strategy

Community trade mark protection gives you great potential to build and defend your brand, and access to many of the possibilities that intellectual property can offer. However, you have to realise this potential: the more you put in, the more you get out.


The strategy you adopt for your trade mark will be unique to you. It will reflect your company's wider interests and its intellectual property portfolio. In pursuing these interests, you should consider three issues in particular:


Using your trade mark

As already mentioned, there are no rights without obligations. The right that has been granted to you is a powerful tool that can be used to help you build brand recognition in the market. However, the monopoly you hold should serve a purpose or it may be removed. The purpose of your trade mark is to distinguish your goods and/or services from those of your competitors in the market. Therefore, your trade mark must be put to use. If you don't use it, third parties can challenge your trade mark for non-use. The law establishes that a CTM must be put to genuine use in the European Union in the five years following its registration, and that this use must not be interrupted for over five years.

If you want additional information about the use obligation, you can read the cancellation process FAQ.

Defending your trade mark

The fact that you own a trade mark does not mean that third parties will stop challenging it. In fact, third parties who have failed to observe the time limits for filing observations or an opposition are given a second chance in which they can try to obtain the cancellation of your right.

You may think this is a bit unfair, but if the tables were turned, you might see it differently: imagine you had failed to observe the time limit for filing an opposition against one of your competitors' trade marks.

The filing of a cancellation action triggers the start of a procedure in which an exchange of arguments between the parties involved takes place. Eventually, if no agreement is reached, we will make a decision.

If you'd like more information about this, read the cancellation process FAQ.

Developing your brand

Your IP strategy will evolve over the years and with it your need to expand. If your ambitions extend beyond the EU, you should seek an extension of your trade mark outside the EU.

There are various options for doing this. You can either file individual applications direct with any non-EU IP office or you can file via the Madrid protocol, an international registration system.

The Madrid Protocol is an essential instrument in worldwide trade mark protection. It is an international registration system, which has been administered by the World Intellectual Property Organization (WIPO) in Geneva since April 1996 and has been accredited by many countries around the world, including nearly all individual European countries, the US, Japan, Australia, China, Russia, and, in October 2004, the European Union.

The Madrid Protocol requires a basic mark, which is then extended to other States that are party to the Madrid Agreement and Protocol. It is important for you to know that, legally speaking, you don't have to wait for your CTM to be registered before applying for an 'extension' of your trade mark outside the EU. However, if your CTM never reaches registration, for whatever reason, your right will not exist at international level.

If the basic mark chosen is a CTM application or registration, the international application must be filed direct with OHIM. In order to use OHIM as the 'Office of Origin', the CTM owner/applicant must be a national of an EU Member State or have a real and effective industrial or commercial establishment or domicile in the European Union. In other words, not all CTM owners/applicants can file an international registration (IR) application based on a CTM.

To file an international application, it is compulsory to use one of the two following forms:

  • OHIM EM 2 form in one of the 23 official languages of the EU, available in two different versions:

    • the first version is for applications made in one of the three Protocol languages (French, Spanish or English)

    • the second one is for applications made in other EU languages

  • WIPO MM2 form in English, French or Spanish

We recommend using OHIM-adapted versions of WIPO forms.

The international application can be filed in any of the official languages of the European Union, but a Madrid Protocol language must also be indicated (French, English or Spanish). A consignment fee of €300 must be paid to OHIM when requesting the international application, while the fees relating to international applications must be paid direct to WIPO. Any payment due to WIPO that has been sent to OHIM will be returned to the applicant.

After having checked the content and completeness of the form, OHIM forwards the international application to WIPO. OHIM is required to notify WIPO of any relevant changes that affect the CTM during the dependency period (five years following the date of the international application).

You can add more countries to your international registration once it has been registered by WIPO. Although this can be done through OHIM as the Office of Origin, it is much simpler to file additional designations direct with the International Bureau of WIPO.

If you would like additional information, you can read the international registration FAQ.

If, when expanding your right to other countries, you are asked to prove the existence of your CTM, you can obtain either an uncertified or a certified copy of your registration through your user area.

Certain countries require certified copies to be authenticated or legalised before they accept them as the basis for a priority claim before their national Office or any other claim before their authorities.

Page last updated 13-03-2014