IP glossary of terms

The idea of a single, unitary Community trade mark system was conceived in the 1960s. Preliminary proposals were prepared in 1964 and published in 1973, though ensuing legislation was a long time coming. In 1980, proposals for a Community Trade Mark Regulation were published. However, not until the principle of harmonisation was accepted and implemented could the creature in the shape of the present Community trade mark be born. Known universally to the English-speaking world as the CTM, the Community Trade Mark was renamed the European Union Trade Mark (EUTM) by Regulation (EU) 2015/2424 with effect from 23 March 2016.

On 20 December 1993, the European Council issued Council Regulation (EC) 40/94 (“the Regulation”) on the Community trade mark which came into force on 15 March 1994. It established a unitary system for registration of marks throughout the European Community and signalled the Commission’s objective of preventing trade mark owners partitioning the European market by adopting different trade marks for different countries and, thereby, thwarting the concept of a single market as originally envisaged by the Treaty of Rome. It was replaced by Council Regulation 207/2009 of 26 February 2009 and was amended further by Regulation (EU) 2015/2424 (“the CTMR”) as of 23 March 2016 (with some provisions coming into force at a later date). It is supported by Commission Regulation 2868/95 of 13 December 1995 (Implementing Regulation, “the Rules”), which has been amended from time to time. Guidelines on practice are published and an up to date set has been in place since 23 March 2016, when many provisions of amending Regulation 2015/2424 came into force.

In practice, whilst the principle of harmonisation holds true throughout the European Union, countries remain free to interpret and enforce law and practice according to national needs. With the coming of Brexit, it is likely that the UK’s national approach to trade mark law and practice will diverge over time from the remainder of the European Union.

Although trade marks are territorial by nature, there are a variety of harmonisation practices worldwide which seek to bring the laws and practices of the different jurisdictions of the world together.  Examples are:

• The Benelux Trade Marks Act which harmonises the trade mark laws of Belgium, the Netherlands and Luxemburg,

• The Paris Convention for the Protection of Intellectual Property (1883), which has 196 contracting jurisdictions (2017) and which obviates discrimination between domestic and foreign applicants, provides for use of a trade mark in a form differing immaterially from its registered format not to invalidate it or diminish the protection granted to it, provides for the protection of well-known marks and imposes an obligation on contracting parties to provide protection against unfair competition.

• Nice Agreement concerning the International Classification of goods and services for the purposes of the registration of marks (1957).

• Vienna Agreement establishing an International Classification of the Figurative Elements of Marks (1973).

• TRIPs Agreement (1993) which sets out minimum standards in acquiring trade mark rights, enforcement, customs and criminal procedures and in dispute prevention and enforcement.