Considerations before filing a CTM - risk analysis

The EU Trademark - the CTM, launched in 1996, has gained extreme popularity. Following a large 40 percent fee cut in May 2009, it has become even more attractive. However, a CTM application will not automatically result in a registered Community Trademark. Of the 88 265 CTM applications received by the OHIM in 2007 68 074 trademarks were finally registered. Considering the number of earlier rights, it is more likely than unlikely that there exist earlier European trademarks that may hinder the registration of your trademark. Since the CTM covers all European countries, earlier trademark rights in any of the member states will also be a ground for opposition against your mark. Still, in 2007, "only" 16 468 oppositions were filed against EU trademark registrations.

A rough estimate based on the the above figures, gives that there is a 10-15 percent risk that an opposition is filed against your mark. Taking into consideration also the risk of refusal due to non-distinctiveness of the trademark, there is an approximate 20-25 percent risk of refusal for a European trademark application. This is a business risk which must be calculated upon if you decide to launch your trademark in Europe before it is registered as a CTM, or as a national trademark in the countries where you operate.

Optimize your chances for CTM approval

Because of the risk of refusal, a few actions and strategies should necessarily be considered before and after a European trademark application is filed. Some of the more important considerations are:

• To chose a trademark which cannot be regarded as being descriptive or non-distinctive for your goods or services.


• In order to evaluate the risk of opposition, consider performing preliminary searching in, at least, the CTM register, but preferably also in the national European trademark registers. You can perform a CTM identity search yourself at the OHIMs website. It is a strong recommendation, however, to assess the trademarks registerability also in comparison to similar marks. An experienced trademark representative is best qualified to conduct the analysis.


• If possible, refrain from using your trademark in Europe during the examination period. When you use your mark, it may attract the attention of possible opposers. If you have started to use your trademark already, it will also be more disruptive to your business if it must be withdrawn as a result of opposition.


• Filing language. A CTM application is filed in two languages, and English is the most common first language. It is advantageous to file a European trademark application with one of the smaller languages, like Swedish, as a second language, as it will make the application less subjective to opposition. Statistics show that right-holders in Latin countries like Italy and Spain are very aggressive in protecting their trademark rights. However, the aggression to oppose is considerably subdued when none of the filing languages match the languages of the possible opposers.

Please be welcome to contact us at Mind The Mark to discuss European trademarks. We are very experienced in all aspects of CTM filing and enforcement, and we will always give you a cost-free quotation and a first assessment of your chances to obtain European-wide trademark protection.