If you would like protection outside of the Benelux, you can request a community patent which would be valid in all member states of the European Union. Before opting for this community trademark, it is important to weigh the advantages and disadvantages of this system with other alternatives such as registering in the Benelux or in distinct countries, either via the international registration system or multiple filings in each country.

The main advantage of the community trademark system is the simplicity of the registration phase. A single request and procedure are used to obtain trademark protection which will be automatically valid in all current and future member states of the European Union. Furthermore, the content of protection is the same in all these countries, which would not be the case if you chose to file separately in each country. In fact, there is a legal regime for community trademarks which must be applied uniformly in all member states (see Regulation No 40/94). This option may, in certain cases, be less expensive, as there is only one filing tax and one registration tax to pay instead of various national filing taxes (and sometimes registration taxes) per country. Here is an overview of the taxes to be paid.

One of the difficulties in obtaining (or continuing) a valid community trademark can come from the “principle of uniqueness” which characterises this system. This principles means that the community trademark forms a single unit and that any problem related to the conditions of protection in one member state may block the request or prevent you from maintaining your registered trademark as a community trademark. For example, a sign which is descriptive in only one member state or a sign for which a prior registration (or even prior use) exists in another member state may be refused. Even if it is registered as a community trademark, it could be cancelled. Therefore, a trademark is simply not possible for certain signs and it is certainly useful to seek expert advice before pursuing this option.

You will find more up-to-date information on registration procedures and the characteristics of the community trademark system on the website of the European trademark office: the Office for Harmonization in the Internal Market (OHIM), as well as a link to the IP C&C Newsletter (periodicity: every two months).

Last update
18 December 2018