European Union Trade Marks
What is a European Union trade mark?
The European Union trade mark system consists of one single registration procedure that gives its owner an exclusive right in the 27 Member States of the European Union. Registration of the European Union trademark (former Community Trademark) is conducted via filing one application directly with the European Union Intellectual Property Office (EUIPO) and is valid in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden.
EU IPO official languages
EU trademark applications (EUTM applications) can be filed in English, French, German, Italian or Spanish. A second language, one of the EU member states official languages, should be indicated by the applicant. This language is used for opposition, revocation or invalidity proceedings with the EU IPO.
What is a registrable sign?
The EUTM Regulation stipulates that a sign be protected as a Community trademark as long as it:
• can be represented graphically; and
• distinguishes the goods and services of one undertaking from those of another.
Examples of such signs are words (including personal names), designs, letters, numerals, the shape of goods or their packaging.
• can be represented graphically; and
• distinguishes the goods and services of one undertaking from those of another.
Examples of such signs are words (including personal names), designs, letters, numerals, the shape of goods or their packaging.
Who may register EU trademarks?
Any natural or legal person, including authorities established under public law, may register an EU trademark.
What is the usual timeframe from filing to registration?
Four-five months, assuming no objections or oppositions.
Does the authority check for relative grounds for refusal (eg, through searches)?
The EUIPO does not check for relative grounds for refusal ex officio. However, it does carry out an EU search and will notify the proprietors of earlier similar EU trademarks which have opted in of publication of the EU trademark application. An EU trademark applicant which has opted in to such search reports will receive a list of the relevant conflicting earlier marks. Further, national search reports from a limited number of participating offices are available upon the applicant’s request at the time of filing, for a fee.
Claiming for priority
The Regulation defines a priority right of six months, similar to the priority right of the Paris Convention.
EU trademark application opposition period
A European Union trademark application may be opposed by any interested party within three months from the publication of a European Union trademark application.
Can rejected applications be appealed? If so, what procedures apply?
Any decision partially or entirely refusing (or revoking or invalidating) an EU trademark application or registration is appealable. A notice of appeal must be filed in writing and the appeal fee must be paid within two months of the date of notification of the contested decision. Further appeals are available to the EU General Court and then to the European Court of Justice.
Use requirements
Once a European Union trademark is registered, evidence of use is not required. However, the trademark rights may be subject to revocation and EU trademark registration declared lapsed, if it can be shown that a trademark has not been used for five consecutive years in relation to the goods and / or services for which protection has been obtained.
Can a mark be cancelled for non-use?
Yes. Cancellation proceedings based on non-use can be initiated by any third party (no legal interest need be shown) if five years have passed since registration of an EU trademark.
Term and renewal of EU TM
EU trademark registration is valid for ten years. It can be renewed for consecutive ten-year periods indefinitely.
What legal protections are available to unregistered trademarks?
At the EU level, no protection is available to unregistered trademarks.
EU trademarks and Registered Community designs after Brexit
EU trademark registrations and registered Community designs will be registered by the United Kingdom Intellectual Property Office (UKIPO) as UK national trademarks or designs at the end of the transition period (31.12.20 (21)). This will take place automatically, without any action being required from the proprietor of the respective trademark or design. All further proceedings regarding the corresponding UK trademarks or designs, such as renewal, for example, should be carried out with the UKIPO.
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