Survey Trade Mark Issues related to Non-EU States and Regions

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A Survey conducted by the ECTA Harmonization Committee

The Harmonization Committee recently discussed various trade mark related problems which concern the relationship between certain EU Member States and Non-EU states or regions.

Among these issues were the consequences of the conversion of a CTM into a national trade mark if the Member State in question comprises regions which do not belong to the EU. For example, in the case of conversion of a CTM into a national Danish trade mark, does the Danish trade mark extend to Greenland although the CTM did not?

Another question of practical importance referred to are the consequences of a bilateral treaty between Germany and Switzerland. This treaty states that the use of a German trade mark in Switzerland is also considered as sufficient use in Germany. Does this imply that an opposition against a CTM could successfully be based on a German trade mark although this trade mark is only used in Switzerland, but not in any of the current EU Member States?

In order to go into these problems more deeply, the Harmonization Committee decided to conducted this survey which gives an overview of the situation in the various Member States. It reveals interesting trade mark related problems which refer to the relationship between the various EU Member States and Non-EU states and regions.

First of all, the survey covers the question whether the various Member States comprise any regions which do not or do not fully belong to the EU or which have their own trade mark system. Subsequently, it deals with the issue of conversion and seniority in these regions. Finally, the existence and scope of bilateral treaties with Non-EU states and further relevant trade mark issues are examined.

This survey is of particular interest with regard to Denmark, Finland, France, Germany, the UK, Italy and the Netherlands. These countries have relationships with certain regions or states which result in various problems and questions in the field of trade marks.

In some of these countries, the way to tackle these problems (in particular the question of conversion) is not yet certain. Nevertheless, the survey provides valuable answers and approaches for nearly all current EU Member States. We therefore trust that it proves useful for all trade mark practitioners and other interested persons, including OHIM representatives, who encounter the challenges covered in this survey.

On behalf of ECTA I wish to thank all former and present Members of the Harmonization Committee and also all other colleagues from the different countries who have taken to the time and effort to realize this project. Their assistance is very well appreciated.

Enjoy the reading!

February 2007

Carolin Kind
Vice Chair of the Harmonization Committee of ECTA