Community Trademark Conversion Procedure

by:ERMIONI PAVLIDOU

Introduction

A Community Trademark (CTM) is a trademark and/or a trademark application which has been filed via the Office for Harmonization in the Internal Market (OHIM) in order to be granted protection and have effect in the whole of the European Union.

The Unitary effect of the community trademarks is one of the most important elements of the community trademark system. According to Article 1(2) of the Community Trademark Regulation (CTMR):

“A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation.”

If an applicant decides to proceed with the registration of an international trademark (registration via the Madrid Agreement and protocol) one must bear in mind that an international trade application is in effect national applications held together under the same number that still have to pass through the national examination in order for them to be approved.

This is not the case with registrations via OHIM by which an applicant through a single registration is granted protection with equal effect throughout the Community, without the need for national examination.

Conversion

There are situations where it may be beneficial for the owner/applicant of the trademark to apply for a conversion. Conversion is a procedure by which a CTM and/or CTM application can be transformed into a national trademark. This means that the trademarks will only have effect on a national level.

The conversion process is intended to be a link between the national trademark systems and the CTMR. In circumstances where the CTM has ceased to exist, it may go through a process whereby it is converted into one or more national registrations (depending on the budget and/or needs of the applicant).

Article 108 (3) OF CTMR deals with the conversion and states that:

“The national trade mark application resulting from the conversion of a Community trade mark application or a Community trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Article 34 or 35.”

 

Legal and practical background of total and partial conversion

Community Trade Mark legislation

The main applicable regulations on the matter are:

- Commission Regulation (EC) No 40/941 of 20 December 1993 Community Trademark Regulation (CTMR)

- Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark 

It is also important to note the requirements and grounds for conversion as well as what we mean by ‘the CTM has ceased to exist’. In short, conversion is possible when a CTM application is withdrawn[1], finally refused[2] or when a CTM registration is revoked, declared invalid[3], surrendered[4] or not renewed[5].

Namely, the proprietor of no longer existing CTM application or registration can request conversion of his CTM application or registration into a national TM application with respect to Member States designated in the request of all or some goods and services. So the applicant is given the choice of full or partial conversion.

Why convert?

One may ask why convert when one can enjoy a uniform and equal protection throughout all the Member States of the EU. There may be several reasons behind such a decision. For example, if a CTM application has been withdrawn inadvertently it could be appropriate to convert in all Member States to preserve the filing date of the CTM. Another reason to proceed in this way is so as not to throw away all the fees paid for the filing of the application.

In cases where there is a change in the business marketing/target strategy, the territorial interests may change and thus it may be wiser to proceed to a conversion after a choice withdrawal by the applicant. Furthermore, it may be that corporations proceed to the assignment of parts of their business which can also lead to different national or territorial interests.

Formal Requirements

Article 109(1) CTMR lays down all the requirements of a conversion application which must be satisfied.

However, Rule 44 of the Community Trademark Implementing Regulation (CTMIR) as well as the judgment of the Fourth Board of Appeal in R 30/2001-4 makes it clear that it is sufficient if the following details (mainly) are provided:

A. The name and the address of the applicant for conversion in accordance with Rule 1 (1) (b) CTMR

B. The filing number of the Community trade mark application or the registration number of the Community trade mark

C. The indication of the ground for conversion in accordance with Article 108 (1) (a) or (b) CTMR

D. The specification of the Member State or the Member States in respect of which the conversion is requested

Rule 45 (1) Community Trademark implementing Regulation (CTMIR) states that, where the application for conversion does not comply with the requirements of Article 108 (1) or (2) CTMR or with Rule 44 CTMIR or other relevant rules, the Office will notify the applicant accordingly and specify a period within which it may amend the application or furnish any missing information or indications.

Refusal grounds

Article 15 of the CTMR provides grounds for refusal of a conversion application. Specifically such an application will be refused where there has been a revocation of the existing registration or EC designation on the ground of non-use.

A further ground for refusal is where the particular ground for which the CTM or international registration designating the EU ceased its effects would preclude the registration of the same trademark in the Member State concerned.

Requirements examined by national offices

The national regulations come into play once the conversion has been accepted by the Office. Then, the national representative takes over as soon as instructions are received and when the Registrar has given consent.

The national law in force in the Member States concerned may provide that the request for conversion be subject to one, or all, of the following requirements: payment of national application and registration fees, filing of a translation of the request in one of the official languages of the Member State in question and of the documents accompanying it, an indication of an address for service in the Member State in question, supply of a representation of the mark in as many copies as specified by that Member State.

 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought on your specific circumstances.

For further information, please contact Ermioni Pavlidou at ermioni@kyprianou.com.cy.


[1]                Article 108 (1) (a) CTMR

[2]                Article 108 (1) (a) CTMR

[3]                Article 54 CTMR

[4]                Article 49 CTMR

[5]                Article 47 CTMR