FAZ Frankfurter Allgemeine Zeitung
8th of June 1999
By Eberhard Kolonko

With two measures, the Council of the European Union has triggered off a boom in the registration of brands for goods and services in Germany and at the European OFFICE FOR HARMONISATION IN THE INTERNAL MARKET in Alicante. The different laws and regulations for trademarks in the member states of the European Union were first of all harmonised. The guideline for harmonisation was realised in Germany through the new brands' law, which became effective on the 1st of January 1995. Furthermore, a new brand was created for the market of the European Union, the European Community Trademark. With effect to the 1st of January 1996, such European Community Trademarks can be registered with the submission of a single application to the European OFFICE FOR HARMONISATION IN THE INTERNAL MARKET in Alicante, and therefore become effective throughout the European Union. The companies have made immediate and enthusiastic use of this new possibility. The number of registrations submitted to the German Patent and Trademark Office increased from 51671 in 1996 to 68610 in 1998.

The development of the European Community Trademark is also splendid: In the first year (1996), 31 572 brands were already registered. The Office expects a lot more than 35 000 applications for 1999. There is, however, a drop of bitterness in the euphoria: the European Community Trademark is only then registered, and therefore usable for business, when two preconditions are fulfilled. No protest is to be made in one of the 15 member states, e.g. because registered, identical or similar brands already exist. In case such a protest is submitted, the applicant must clarify the reasons for the protest. Therefore, the principal of all or nothing applies to the European Community Trademark. A single reasonable protest made in a member state can cause the rejection of the European Trademark - time and costs were spent in vain. The increased number of submitted applications for trademarks in Munich and Alicante has several reasons: on the one hand, the measures of the European Community have resulted in a high level of publicity. Across-border licensing systems such as selective sales and franchising make use of the possibilities resulting from the new laws and regulations. On the other hand, the jurisdiction in the member states of the European Union is on friendly terms with trademarks, and has appreciated particular protection needs for the trademarks in such a manner that has not existed up to now. In accordance with this, the owner of a German trademark or a European Community Trademark can defend himself against the sales of his goods in the protected state, i.e. in Germany or within the European Union respectively, should these goods not be distributed by himself or with his approval within the European Union (to be precise: within the European Economic Area [EEA], which also includes Norway, Ireland and Liechtenstein). Today, the companies have the choice between two possibilities for registering their trademarks for their presence on the common European market: they can register a national trademark in one of the states and expand the protection of this trademark via a registration submitted to the Organisation Mondiale de la Propriété Intellectuelle (World Intellectual Property Organisation) in Geneva to the appropriate desired states (however still with the exception of Greece and Ireland at the current point in time). The companies can also decide for the European Community Trademark . As a result, a registration at Alicante guarantees the protection of the Trademark in all states of the European Union. The procedure of the European OFFICE FOR HARMONISATION IN THE INTERNAL MARKET in Alicante is time-consuming. Only 23 154 trademarks were registered by the end of 1998 from the approximate number of 102 000 trademarks, the applications of which were submitted on the 1st of January 1996, i.e. approximately a quarter of all submitted applications. The reason for this lies above all in the high number of the corresponding protests made in the member states. Approximately 1 in five registration applications results in a protest.

With regard to this situation and due to the principal of all or nothing, the registration procedure of the European Community Trademark is recommended to those companies, which have or intend to have their market presence in all or nearly all member states of the European Union. They should have developed a strong and decisively individual trademark and should also carry out appropriate research.