Executive Intellectual Property Bulletin

European Community Trademark Office Opens

The European Community Trademark Office Opened April 1, 1996. You can now file a single application covering 15 European countries!

The 15 Member States of the European Community have established a European Trademark Office to be known as the Office for the Harmonization of Intellectual Property (the OHIM). It is located in Alicante, Spain. Although the OHIM will not officially open until April 1, 1996, it is now accepting Community Trademark application filings. All applications on file on or before April 1, 1996 will be accorded an April 1, 1996 filing date.

If you are currently considering filing for trademark protection in Europe, please consider filing any application on or before April 1, 1996. Applications filed after this date can be opposed on the basis of a previously filed application. Applications accorded the April 1 filing date cannot be used against one another in an opposition proceeding. Also, if you currently own registrations of the same trademark in more than one European country, a Community Trademark application may be used to consolidate these registrations for the purpose of reducing future maintenance and renewal costs.

We estimate that initial Community Trademark application filing fees and expenses will be in the range of $1800.00 - $2300.00. Additional costs of at least $1000.00 per application can be expected in connection with subsequent examination of the application by the OHIM.

An application filed in the OHIM will not be examined under the "likelihood of confusion" test used by the U.S. Patent and Trademark Office. Rather, OHIM will register a mark whether or not it may conflict with a prior trademark. It will be up to the owners of such prior trademarks to oppose the registration of a conflicting trademark. For this purpose, the OHIM provides an opposition proceeding. Because the OHIM will NOT notify owners of prior Community or national registrations that a possibly conflicting Community application has been filed or published, owners of European marks are strongly encouraged to establish and maintain watching services on marks of interest to them so that oppositions can be filed as necessary. We would be pleased to assist you in establishing a European and/or a worldwide watching service for any of your marks. The costs are reasonable and are usually invoiced annually on a per mark basis. Watch services can also be used to obtain information on trademark-related activities of competitors, licensees, distributors, agents, etc.

We look forward to working with you to secure or maintain your European trademark rights. Please call us immediately if you have questions or comments, or if we can be of further assistance. We would be pleased to discuss European trademark issues in particular, or trademarks in general, if this would be useful.

If you are interested in filing a Community Trademark application, please contact Frank Farrell or any one of the attorneys at Schwegman, Lundberg & Woessner, P.A. at 612-373-6900 or by facsimile at 612-339-3061.