The Community Trade Mark came into being only five years ago this month, but already many brand owners are opting to file first for a CTM rather than a UK registration. How has this happened and how is the UK Registry reacting?
Who: The Community Trade Mark Office/The UK Trade Marks Registry
Where: Alicante and London
When: April 2001
On 1 April 2001, the Community Trade Mark Office in Alicante celebrated its fifth birthday. Its setting up encountered a good deal of criticism, but few would disagree with the proposition that it has so far been a great success. That success, however, has affected other EU National Trade Mark Registries. The UK Trade Mark Registry, for instance, has noticed a significant downturn in trade mark applications which are filed in London. Indeed, it was partly because of this that the Trade Mark Registry recently announced a review of its long established policy of examining all trade mark applications on "relative grounds".
All European trade mark registries, including the CTM registry, examine applications on "absolute grounds". This means that on receipt of an application for registration of a trade mark, they check to see if there is an existing registration of exactly the same trade mark in respect of the same goods or services. If there is, that will be an "absolute knockout" and the application cannot proceed.
Examination on "relative grounds" is much more time-consuming and involves checking to see if an objection should be raised to an application because there are existing same marks registered for similar goods, similar marks registered for same goods or similar marks registered for similar goods combinations which might prevent the application proceeding. The CTM registry, and most European trade mark registries, do not examine and take action on relative grounds. They leave it to brand owners themselves to monitor trade mark applications generally and make their own objections if they come across an application which they believe conflicts with their own brands.
As a result of the UK being one of the minority registries who do examine on relative grounds, there are comparatively fewer objections in the UK by the time a trade mark application is advertised. Another result of this difference in approach, however, is that far more CTM applications get on to the Register. This naturally means that applying for a CTM (which carries with it a one stop registration across all the 15 EU member states) is becoming far more popular than simply filing in the UK. Whilst CTM applications are up, therefore, totalling over 57,000 in 2000, UK trade mark applications are down. Of course, in theory, the ultimate result should be the same as vigilant brand owners take steps to oppose or remove from the register any CTM registration that they believe has been allowed in a manner contrary to the rules.
In the real world, however, this does not necessarily happen, hence the CTM's popularity.
Why this matters:
For the UK Trade Mark Registry fewer applications means fewer fees. When the CTM initially opened in 1996, the UK felt that they might at some stage have to review its "relative grounds" inspection policy, but did not imagine they would be constrained to do so for many years. The quick success of the CTM system, however, has meant that it have had to review that plan, hence their recent decision to take a fresh look at whether "relative grounds" examinations are viable in the future. If this process leads to the UK trade mark registry retreating to "absolute grounds" in the cost examination only, this may not necessarily be a welcome result for UK brand owners, but it will certainly lead to a more harmonized registration system across Europe.