In order to protect a sign as a registered trademark in the EU, applications for either a Community trademark of the EU or national trademarks in each of the member states can be filed. Both systems of protection exist in parallel. The regulations of the Community trademark form an autonomous system. The utilization of the regulations is independent from the national systems (ECJ, judgement of 17/7/2008 – C-488/06-P – Aire Limpio). Thus, the Office for Harmonization in the Internal Market (OHIM) being in charge for the registration of community trademarks does not feel in any way bound by decisions of national authorities and courts.
Recently, the ECJ has made an exception from that autonomy. If an opposition against a Community trademark application is filed based on an earlier trademark the OHIM may not treat the opposition mark as being totally incapable of being protected, even if in the opinion of the OHIM the protected sign is e. g. descriptive (judgement of 24/5/2012 – C-196/11 P – F1). Since the OHIM cannot question the validity of the national registration it has to assume certain degree of distinctiveness and therefore a minimum scope of protection (cf. for German opposition proceedings: Federal Court of Justice (BGH), order of 29/5/2008 – I ZB 54/05 – Pantohexal: the distinctiveness of the opposition mark may not be denied). If such an allegedly unprotectable national mark is inserted as a part in a younger trademark the likelihood of confusion cannot be denied simply with the argument that the earlier sign is incapable of being protected.
As consequence of the decision, the dispute relating to the protectability of the earlier national right cannot be resolved by OHIM. It has rather to be resolved out in a separate revocation action before the competent national authority. In some countries an application for a revocation action of a national trademark can only be filed within a certain time limit, e. g. in Germany within ten years after the registration of the trademark. Therefore, applicants of Community trademarks being confronted with an opposition based on such a trademark are advised to check the option of a revocation action at an early stage in order to comply with such time limits.