Insights

Pan European Protection

The need to protect trademarks on a European-wide level was recognised as early as in the 1960s when a Convention on European Trademark Law was prepared. Notwithstanding this early foresight, a harmonised system of protection did not come about until 1993, with the first Community Trademark Regulation being published in 1994. Through this Regulation, undertakings could protect their brand on a European-wide scale and by means of 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.

Community Trademarks

According to statistics released by the Offce for the Harmonisation of the Intemal Market (OHIM), in 2012, just below 100,000 Community Trademarks were registered and have effect across the EU. This is clearly evidence of the allure of this means of protection. Data analysis carried out until May 2013 indicates that just under 40,000 Community Trademarks have been registered this year.

This means of protection is not only restricted to persons within the EU but is available to any natural or legal person of whatever nationality wishing to apply for protection of their mark within the single European market.

In addition, from a cost perspective, achieving protection on an EU wide scale is economically sensible for both start-up businesses within the EU, who are achieving recognition through their brand, as well as established businesses that have not yet permeated the single market.

Another element making the Community Trademark attractive is that it makes 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). This renders the registration procedure easily accessible even to non-EU registrants who are familiar with the Nice registration system. Furthermore, it is also possible to file multi-class applications.

Why Malta?

Malta, as a member of the EU, is well poised to provide assistance in respect of applying and registering for CTMs. As can be noted from the statistics provided on the OHIM website, applications are rnost often filed in the English language, which places our jurisdiction in a strong position to provide assistance in applying to register a Community Trademark, English being an official language in Malta.

Additionally, Malta makes use of the same system of classification that is adopted by the Community Trademark making our jurisdiction one that is familiar with handling Comrnunity Trademark applications.

Finally, in Malta, it is possible to apply for a conversion whereby if a Cornmunlty Trademark application is rejected, or if there has been an objection to it upon application, one may also opt to convert that application to a national application.

This article was published in the July 2013 edition of the Abacus Newsletter, published by Abacus and can be read online by clicking here.