Taking counsel

  • 2004-09-15
  • Renata Berzanskiene, Sorainen Law Offices in Vilnius
National or community trademark?Starting May 1, 2004, Baltic businessmen have acquired the right to protect their trademarks in the European Union, a market containing 475 million consumers. The number of applications already submitted include 17 in Lithuania, seven in Latvia and more than 30 from Estonia, the majority of which have been filed by manufacturers of beer, clothing, furniture, medical appliances. Currently more than 400,000 trademarks are registered in EU.

A trademark, like any other intellectual property, may be sold, pledged, as well as licensed, for use. Very often a trademark, which is attributable to a proprietor's long-term intangible assets, comprises the biggest portion of that proprietor's assets, or value. By having your community trademark (CTM) protected and knowing that the intellectual property of yours is under protection throughout the union, you will be free to trade and render services within the entire territory of the EU.
Protection of a trademark within the EU is usually prevented by ignorance of the laws and psychological stereotypes of businessmen. But there is an uncompromising requirement 's the CTM should be strong. A majority of Baltic businessmen submit national applications, which is reasonable when a businessman operates locally, but they will be forced to seek protection of their trademarks throughout the EU by the action of competitors.
If a Lithuanian who only possesses national trademark registration wants to ship his goods to, say, Hungary, he will not be able to use his trademark if a similar CTM has been registered by his competitor from Latvia. Should the aforementioned Latvian who has the CTM registration decide to bring his goods to the Lithuanian market and his Lithuanian competitor's trademark is protected in Lithuania only, the Lithuanian businessman could contest the registration of or the use in Lithuania of the Latvian proprietor's CTM. Judgment of the case would be conditional on which trademark was registered earlier, whether the trademark was registered for the same classes of goods, and so on. Note that the registered mark is effective solely for such goods/services that are specified in the trademark registration certificate.
The fee for filing a CTM application for the maximum three classes of goods/services is 975 euros. The CTM as a national trademark is effective for 10 years and is renewable for an indefinite number of subsequent terms of 10 years. There is a possibility to check whether or not a trademark similar to clients' has been registered. The supervision and filing of a protest, if any, can help avoid unwarranted and long-lasting litigation necessary to revoke registration of a trademark.
There are more advantages for registering a CTM, since infringement disputes would be solved in local specialized CTM courts. Cancelation of a CTM registration causes the registration to lose effect across the entire European Union. However, in such a case the registration of a CTM may be converted into a national registration.
The answer whether to register a national trademark or a CTM depends on each particular case. There is no single answer. It is crystal clear that businessmen should protect their trademarks as any other property 's only the proper form should be selected after a thorough evaluation of all circumstances.
The CTM, therefore, is a gateway not only to the existing single market but also to a market in the process of expansion.