Converting a Community trademark

A Community trademark is a trademark which has been registered with the Office for Harmonisation in the Internal Market (OHIM) in order to enjoy protection across the European Union. The unitary effect of Community trademarks is one of the most important elements of the Community trademark system. According to Article 1(2) of the EU Community Trademark Regulation:

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.

Through a single registration with OHIM, the registrant gains protection with equal effect throughout the European Union, without the need for national examination.

In some situations it may be beneficial for the mark owner to apply to convert its Community trademark into a national trademark. This means that the trademark will have effect on a national level only. The conversion process is intended to link the national trademark systems and the Community trademark system. In circumstances where the Community trademark has ceased to exist, it may be converted into one or more national registrations (depending on the budget and/or needs of the applicant).

Article 108(3) of the Community Trademark Regulation deals with 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.

The main regulations applicable to conversion are:

  • the Community Trademark Regulation (40/94); and
  • EU Regulation 2868/95 implementing the Community Trademark Regulation.

Under the Community Trademark Regulation, conversion is possible when a Community trademark application is withdrawn or finally refused, or where a Community trademark registration is revoked, is declared invalid, is surrendered or expires. The owner of a Community trademark application or registration that no longer exists can request conversion of the application or registration into a national trademark application for the member states designated in the request in respect of some or all of the relevant goods and services. Thus, the applicant can choose between full and partial conversion.

Why convert?
There are several reasons why a Community trademark owner may choose to convert its mark when the Community trademark enjoys uniform and equal protection throughout all member states. For example, if a Community trademark application has been withdrawn inadvertently, it could be appropriate to convert in all member states in order to preserve the filing date of the Community trademark. Another reason might be to obtain some value from the filing fees paid. Where the business has changed its marketing or targeting strategy, its territorial interests may change and thus it may prefer to convert following withdrawal of the application. Further, a company may split up its business, leading to different national or territorial interests.

Formal requirements
Article 109(1) of the Community Trademark Regulation lays down the requirements of a conversion application. However, Rule 44 of the Implementing Regulation and the judgment of the Fourth Board of Appeal in R 30/2001-4 make it clear that it is usually sufficient if the following details are provided:

  • the name and the address of the applicant for conversion in accordance with Rule 1(1)(b) of the Community Trademark Regulation;
  • the filing number of the Community trademark application or the registration number of the Community trademark;
  • the grounds for conversion in accordance with Article 108(1)(a) or (b) of the regulation; and
  • the member state or states in respect of which the conversion is sought.

Rule 45(1) of the Implementing Regulation states that where the application for conversion does not comply with Article 108(1) or (2) of the Community Trademark Regulation, or with Rule 44 of the Implementing Regulation, OHIM will notify the applicant accordingly and specify a period within which it may amend the application or provide any missing information.

Grounds for refusal
Article 15 of the Community Trademark Regulation sets down the grounds for refusal of a conversion application. Such application will be refused where:

  • there has been revocation of the existing registration or EU designation on the grounds of non-use; or  
  • the reason why the Community trademark or international registration designating the European Union ceased having effect precludes registration of the mark in the member state concerned.

Requirements examined by national offices
Once the conversion has been accepted by OHIM, the national office takes over. The national law of member states may subject the request for conversion to any of the following:

  • payment of national application and registration fees;
  • filing of a translation of the request and the accompanying documents in an official language of the member state;
  • inclusion of a service address in the member state; and
  • supply of representations of the mark.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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