European Union Trademark: A Malta Perspective

       Malta has been a European Member State since 2004. This has presented industry with two routes for trademark protection, depending on the business needs of the applicant. One can register a national/domestic trademark directly in Malta with the Malta Intellectual Property Office or obtain protection via the European Community Trademark registration route, the latter having the added advantage of covering 27 countries within the EU.

       It is an undisputed fact that a trademark is often a company's most valuable asset, hence the requirement of maximum protection under the laws of the market within which the company operates. The European Community Trademark presents a state of the art, cost-friendly mechanism to achieve such widespread, through protection.

       The Origins of the European Community Trademark 

       Originating in 1964, the concept of a European-wide trademark protection procedure took the form of a draft of a "Convention on European Trademark Law". However, it was not until 1980 that the first proposal for regulating a Community Wide trademark appeared. Thereafter, in 1994 the first Community Trademark Regulation was published. Through this Regulation, firms could protect their brand on a European-wide level through a harmonised and simplified one-stop-shop process compared to that through which undertakings were forced to apply for protection in every single Member State of their choice.

       European Community Trademarks

       According to statistics issued in 2012 by the Office for Harmonisation of the Internal Market (“OHIM”), well over 100,000 Community Trademarks were registered, clearly evidencing the success of such harmonised procedure.

       Updated on: 10/01/2014

       Benefits of European Community Trademarks Registrations

       Besides the obvious advantages of registering one’s trademarks (or “marks”) at one centralised office through one single registration, other advantages include:

       
•                Protection through one registration form and obtaining one renewal date applicable in all the EU member countries
       
•                Removing any need to fill out multiple registrations and pay multiple fees
       
•                Obtaining a more regional rather than a national/domestic reach for protection of one’s brand
       
•                Applying in English (or any of the official EU languages), and indicating a second language (French, German, Italian, or Spanish), which may be used in further communications with between the applicant and OHIM
       
•                Simplified and single registration requirements rather than multiple requirements in separate countries.
       
•                The application does not require a statement of use or intent to use the mark.
       
•                Use of the mark on one member state constitutes use in all of the EU member countries
       
•                The use of the official International Classification of Goods and Services system for the purpose of the registration of marks under the Nice Agreement administered by the World Intellectual Property Organization (WIPO).
       
•                The possibility to filing multi-class applications.

       Practical Considerations for European Community Trademark Registration

       Having highlighted the advantages of registration of a European Community Trademark, one also needs to list the few possible drawbacks which are not usually found in individual trademark domestic registrations.

       At the outset, legal and filing fees can be quite high. The cost of enforcing one’s trademark and fees for maintenance thereof can also be quite significant.

       The advantage of having one’s registration applicable to all countries can also result in the disadvantage that any one of these countries can challenge the application. Consequently if a mark is successfully challenged and rejected in one country such rejection would be applicable in all EU member countries.

       A European Community Trademark provides a means of protection that is not only restricted to EU nationals but is available to any natural or legal person of whatever nationality wanting to apply for trademark protection within the single European market. However such non-EU-resident, or such entity not having its principal place of business/sufficient business presence in the EU, will need to retain a representative from the EU for any OHIM proceedings. This requirement does not apply to submitting the application, but is a requirement for subsequent actions, such as opposition proceedings.

       Malta and the European Community Trademark

       Malta is an EU member state and well positioned to provide assistance in the application, registration and prosecution of CTMs. English being an official language for Malta is also another advantage that the country presents, due to the fact that, as evidenced by OHIM statistics, most European Community Trademark applications are done in English.

       Malta also makes use of Nice Convention for the classification of goods and services. Conversion of a European Community Trademark application into a national application is also possible.

       All this, coupled to the fact that the country is a hub for international business, lower professional fees,  IP portfolio organisation, tax planning and corporate structuring, renders Malta an ideal location for the launch of one’s community trademark strategy.  

       Our Intellectual Property team will be very happy to assist you in all your trademark planning, regisrations, prosecutions and restructurings, of any domestic or european trademark applications.