INTRODUCTION AND SCOPE OF PROTECTION
The EU Trademark (EUTM) was introduced in 1994, and the first applications could be filed on 1 April 1996. It allows protecting a trademark for all 28 Member States of the European Union, accounting for almost 500 million people, by means of a single filing before one single trademark office, the EU Intellectual Property Office (EUIPO).
The EU Member States are (with the corresponding ISO codes as used by WIPO):
EU Member States as at 1 April 1996 (EU–15)
|Austria (AT)||Greece (GR)||Luxembourg (LU – part of BX)|
|Belgium (BE – part of BX)||Finland (FI)||Netherlands (NE – part of BX)|
|Denmark (DK)||France (FR)||Portugal (PT)|
|Germany (DE)||Ireland (IE)||Spain (ES)|
|Great Britain (GB)||Italy (IT)||Sweden (SE)|
|Cyprus (CY)||Lithuania (LT)|
|Czech Republic (CZ)||Malta (MT)|
|Estonia (EE)||Poland (PL)|
|Hungary (HU)||Slovakia (SK)|
|Latvia (LV)||Slovenia (SI)|
|Bulgaria (BR)||Romania (RO)|
EU Member State since 1 July 2013
N.B.: Switzerland (CH), Liechtenstein (LI), Norway (NO) are not members of the European Union.
When a new country joins the EU, the EUTM automatically extends to that country. That last happened with Croatia, which acceded the EU on 1 January 2013. Third parties’ rights in the accession country that pre-date the accession date are maintained and can be held against the use of the EUTM in that country but cannot be relied upon to invalidate the EUTM. Existing identical registrations owned by the EUTM proprietor can be rolled under the EUTM by means of a seniority claim to streamline the trademark portfolio while maintaining rights.
The following are candidate countries for entry in the European Union: Montenegro (ME), Iceland (IS), Macedonia (not ISO code defined yet), Albania (AL), Serbia (RS), Turkey (TR).
Unitary right: A EUTM is always registered for the entire EU. It cannot be split up and applied or registered for only some EU Member States (“All or Nothing Principle”). It can, however, be licensed for part of the EU.
In about two years, the United Kingdom is likely to leave the European Union. As a result, and from the effective date of the so-called BREXIT, EUTMs will no longer be valid in the UK. One way or another, existing EUTMs will continue to have effect in the UK by means of a kind of conversion, maintaining their original filing or priority date, but as a national UK trade mark. This “conversion” is likely to trigger a cost, albeit minor, and it is also likely to require some kind of application or “opting-in” by EUTM owners. Already that and certainly anything beyond this is mere speculation at this time. We will provide further and more detailed information as soon as decisions have been made public.
WHO CAN OWN A EUTM
Any natural or legal person can own an EUTM. There is no geographical restriction, nor is it a requirement to own a basic registrations. Authorities established under public law and associations that are treated equivalent to legal persons under national law can also own an EUTM.
An EUTM may consist of any sign, particularly words (including personal names), designs, numerals and letters, colors, shapes, as well as sounds. For the time being, and until 31 September 2017, graphic representation continues to be a requirement. As from 1 October 2017, this requirement will be dropped. This will have an impact on how to register some non-traditional trademarks, less on which kinds of trademarks can be registered.
In order to be registrable, the mark must be distinctive, not descriptive, not misleading and – with respect to shapes – not functional. These are the so-called absolute grounds for refusal that are examined ex officio by the EUIPO. Colors and product shapes, as well as slogans, generally meet with significant skepticism. If a mark is considered to be devoid of inherent distinctiveness, it may still be accepted on account of acquired distinctiveness. However, secondary meaning in the entire EU is very difficult to prove.
Given the unitary character of the EUTM, it must be registrable in the entire EU. This means that a term that is descriptive, non-distinctive or offensive in any of the 24 official languages of the EU will be refused registration as an EUTM. These cases are rare and in any event, if an EUTM application is refused on account of a problem in a single or a few jurisdictions, proving acquired distinctiveness may be possible and otherwise, conversion may be an option (see below).
PRIOR RIGHTS OF THIRD PARTIES
Registration may be refused if a third party owns a conflicting prior trademark or other right that can be held against an EUTM and brings an opposition. Prior rights are relative grounds for refusal that the EUIPO will not examine ex officio. In other words there is no citation system. The prior rights most often invoked in oppositions against EUTM applications are prior EUTMs and national trademarks (applications or registrations), use-based and Common Law trademark rights protected under the national law of a Member State, and company and trade names. Designs and copyrights cannot be invoked in an opposition but only in a cancellation action. The same is true for bad faith.
If the third party who owns the prior right does not file an opposition against the registration of the EUTM, this does not mean that the EUTM is safe. The owner of the earlier right can still apply for cancellation of the EUTM. There is no time limit for this nor does the EUTM become incontestable at any point. Failure to enforce an earlier right against an EUTM may after five years lead to acquiescence; however, that requires that the owner of the earlier right was aware of use and registration of the EUTM and that the EUTM owner can prove that.
If there is a conflicting earlier right in only one EU country and the opposition cannot be settled, the EUTM is rejected altogether. As a unitary right, the EUTM cannot be registered for only some EU countries. That said, only some 20% of the EUTM applications receive oppositions, more than 70% of these are settled amicably, and many of those that are decided fail. The statistical risk of refusal of an EUTM application on account of an opposition is therefore below 4%.
CONVERSION OF THE EUTM INTO NATIONAL APPLICATIONS
In case the EUTM application is refused for a reason that exists only in some EU Member States, for example a prior right, it can be converted into national trademark applications while maintaining the original filing or priority date. Conversion is also possible if the registered EUTM loses its effect based on other grounds such as surrender or cancellation. This reduces the business risk arising from opting for an EUTM rather than national marks.
ENFORCEMENT OF THE EUTM
An EUTM can be enforced from the moment its registration is published. Making use of the Fast Track Filing System now offered by the EUIPO, this can be achieved within four to five months from filing.
The EUTM is enforced like a national mark, before national courts. The EUTM owner has some room for choice of venue for bringing an infringement action. If the action is brought in the right venue, the court can issue a pan-European injunction. This is one of the unique advantages of the EUTM. National marks must essentially be enforced one by one to prevent infringement in numerous EU jurisdictions.
When choosing the right venue, there are many issues to be taken into account beside the geographical scope of the injunction to be issued of the EUTM court, such as the cost of litigation, the reliability, predictability and sophistication of the court, and language and cultural aspects including of course whether the judges are likely to be familiar with the trademarks at issue. Getting this right at an early state in the litigation requires in-depth legal advice.
USE REQUIREMENT AND REVOCATION OF EUTMS
EU trademark law does not require that a trademark be used at the time of filing or registration. The use requirement only kicks in five years after registration of the trademark. At that time, it becomes vulnerable to revocation. This, however, requires a request filed by a third party. An unused mark that is not challenged will stay on the register. Moreover, there is no abandonment doctrine. If use of the mark is taken up in relation to certain goods and services, the registration is validated and can no longer be revoked for those goods and services. That said, the previously unused mark cannot later on be held against another party who acquired a later trademark during the time the earlier mark was vulnerable to revocation. That party’s later right is protected against attacks based on that earlier mark by the so-called intervening rights provision.
Enforcing an unused mark is not recommended because it makes a revocation request from the owner of the challenged right very likely.
EUTMs can be revoked on account of a request filed with the EUIPO. The burden of proof is on the EUTM owner. The revocation applicant need not submit any arguments or evidence of non-use. A revocation action can also be brought by means of a counterclaim in an infringement action based on the EUTM.
The EUTM can be used in a form which differs from that which has been registered, provided that the distinctive character of the trademark remains the same. Whether use is made in just one Member State or cross border is not the issue but whether the use is genuine, i.e. economically sensible and serious. Since the famous ONEL decision of the CJEU, both the EUIPO and the General Court have confirmed use of EUTMs in just one Member State as genuine use on more than one occasion. This enables trademark proprietors to sustain protection for the whole EU without having to use the mark everywhere in the EU.
PRIORITY AND SENIORITY
If the trademark has been applied for in a state party to the Paris Convention or the WTO within the 6 months preceding the EUTM application, the priority of this first application may be claimed for the EUTM. Priority can be claimed if the new filing is for the same mark and to the extent it is for the same goods or services (partial priority). It is not necessary for the owners of the first and the subsequent filing to be identical; the right of priority can be assigned to another applicant. This is helpful in particular where different group companies own the mark in different parts of the world.
If the trademark has been previously registered in an EU Member State, the seniority of this registration may be claimed for the EUTM (either within 2 months from filing the EUTM application or at any time after registration of the EUTM), provided the trademarks, the goods and services for which seniority is claimed, and the proprietor are identical. The sole effect of claiming seniority is that the national registration may be dropped without detriment to the proprietor’s trademark rights in that particular country, allowing the EUTM owner to bundle its trademark portfolio and, ultimately, save cost. A seniority claim does not change the priority of the EUTM as such and it does not take effect before the national mark is actually surrendered or allowed to lapse.
COMPARISON OF THE EUTM WITH NATIONAL TRADEMARK REGISTRATIONS – PROS AND CONS OF THE EUTM
For any business that is not purely local or national in the EU but extends, even if only potentially, to more than one EU Member State, the EUTM offers the most appropriate tool for brand protection in the EU. This is because:
- Costs are competitive (obtaining an EUTM is less expensive three national registrations, or, depending on country, even two)
- There is only one single registration procedure before one single office (EUIPO) with very few formalities, in a single language, and with the assistance of a single EU representative
- Protection extends across the EU, keeping options open: in a first-to-register system such as the EU, if you don’t register your mark, somebody else may, blocking market entry for your mark in the future. The EUTM avoids that problem once and for all for the entire EU
- The EUTM can be enforced across the EU in a single litigation (pan-European injunctions)
- Use in a single Member State will normally comply with the use requirement for the EUTM. National registrations (or IRs designating EU Member States) must be used in each country of registration to be maintained
National registrations are therefore recommended only where the business is (and is likely to remain) purely local or where an EUTM is not available due to third party rights or because of absolute grounds for refusal (lack of distinctiveness, descriptiveness, functionality etc.) which do not apply in all Member States (for example for language reasons) or are handled less rigidly by national Trademark Offices.
International Registrations (IRs) designating EU Member States are less expensive than national registrations. The difference in cost is therefore mitigated when taking the IR route. However, the other disadvantages of national registrations remain as IRs are protected like national registrations. This concerns, in particular, the use requirement: IRs in the Member States can only be maintained to the extent they are used in every single country. On the side, it is noted that Malta is not a member of the Madrid Protocol and can therefore not be designated by means of an IR. All other EU Member States are members (see list of Members of the Madrid Union).
GETTING AN EUTM – APPLY DIRECTLY OR DESIGNATE THE EU IN AN IR?
The EU joined the Madrid Protocol on 1 October 2004. Its ISO code used by WIPO is EM. Once protection is granted to the IR in the EU, the right obtained is fully equivalent to an EUTM. Whether to apply internationally or directly is therefore a question of cost, practicality and some substantive considerations. Here is a brief overview:
Cost: Official fees for filing EUTMs directly or designating the EU in an IR are just about the same. The fact that – at least initially – no EU representative needs to be involved of course provides for cost savings. These, however, are mitigated where the IR is filed mainly or exclusively to designate the EU, as WIPO’s basic fee must be added to the overall expenses (as well as of course national filing fees raised by the home office, for example the USPTO, for the IR).
Flexibility and independence of basic mark: In a direct filing with the EUIPO, the specification can be tailored in accordance with EU law and practice, which allows the use of broader terms. An IR designation has to match, or be more specific than, the basic mark, and remains dependent on the basic mark and its validity for five years. If, during these five years, the basic mark is invalidated, the whole IR becomes invalid. In that case, the IR holder can apply for transformation, which leads to effectively converting the IR designations into national (or, in the case of an EUTM, regional) trademark applications. By doing so the priority can be maintained but the process is costly and new issues can arise with respect to the applications.
The dependency on the basic mark during five years also means that the IR cannot be assigned to parties in a country that is not a member of the Madrid system.
Speed: On account of recent changes to the EU Trademark Regulation, the speed with which smooth direct filings are registered is about the same as that with which IR designations of the EU obtain protection – namely roughly four months.
Handling and communication: To date, WIPO does not communicate electronically with holders and representatives. Where the EUIPO objects to the registration of a trademark, it notifies WIPO setting the usual two-month time limit for the reply. WIPO forwards this to the IR holder. Meanwhile, the time limit is running. If, at the holder’s end, there is any confusion about the communication and its meaning, further valuable time is often lost before the objection is dealt with. These issues do not arise where the EUIPO deals directly with the applicant or its representative, which usually occurs by electronic means.
Conversion and “opting-back”: Where an EUTM application or registration is refused or invalidated, its owner can apply for conversion into national applications in the EU countries of interest, maintaining the priority in the countries in question. Where the EUTM was obtained by means of a designation in an IR, instead of converting into national applications, the owner can “opt back” into the IR and convert the EUTM into subsequent designations of EU Member States under the IR. The difference in cost is significant. That said, the statistical relevance of this option is relatively low given that conversion is not frequent.
All in all, where multi-national protection for a mark is sought, including for the EU, and the specification used for the basic mark is regarded as sufficient, an IR is a cost-effective alternative to filing an EUTM directly with the EUIPO. Where, however, the filing program is smaller and essentially concerns only the EU and maybe one or two additional countries, filing directly with the EUIPO and the other offices costs the same or less and appears more efficient and straightforward.
EUTM REGISTRATION PROCEDURE - OVERVIEW
The registration proceedings before the EUIPO comprise the following stages. It takes about four to five months for the EUTM registration to issue, provided the application is Fast Track (see below), and there is no Office objection (descriptiveness etc.) or third party opposition.
- filing of the application (electronic), payment of fee (basic fee 850 €)
- preliminary examination and according of filing date; examination of formalities and classification (not necessary in the event of Fast Track filing where all terms are taken from Harmonised Database)
- search for earlier EUTMs and, optionally, national marks (only informative, no citations)
- examination of absolute grounds for refusal (distinctiveness, descriptiveness etc.)
- publication of the application (in all 24 EU languages)
- three-month opposition period
- if no opposition or if oppositions concluded: registration in the EUTM Register and publication
Filing requirements for an EUTM
The application for registration of an EUTM must indicate the applicant, where appropriate the representative, the trademark and the goods and services.
The trademark must be represented graphically. This requirement will be replaced or further specified as from 1 October 2017.
A word mark can just be indicated in standard characters. Upper and lower case can be mixed without altering the type of mark, i.e.
Any other mark (figurative, three-dimensional, movement, sound etc.) must be shown in an extra file (jpg) attached to the application. If a device mark is in color the colors must be indicated in words (recognised color codes can but need not be given). A description is optional except in the case of some of the more exotic trademark types (such as marks merely consisting of color or color combinations, or position marks). If the mark is three- dimensional, up to six perspectives of the mark can be shown, but they all have to be displayed on the same sheet / in the same jpg.
If I have a logo that contains a word, what do I file? The word per se, the word and the figurative elements per se, or the logo as a whole? For starters, if the logo will be used as such, it normally makes sense to register the logo as a whole. That will normally give solid protection to the word as verbal elements are generally considered to be the dominant elements when combined with figurative elements. However, i it is not sure whether the logo will stay the same, the word element should be filed on its own to make sure the registration does not become vulnerable to revocation after five years due to non-use. Where the figurative elements themselves are distinctive and should obtain protection of their own right, it makes sense to file these separately, as otherwise the emphasis will generally remain on the verbal elements when comparing to junior marks, making it more difficult to protect the figurative elements effectively against unauthorised use by others.
Do I file my logo in color or in black and white? Whether a colored logo should be filed in black and white or in color depends on the desired scope of protection. Generally – and this remains true – black and white registrations cover different color renderings. While a black and white registration will not be considered strictly “identical” to a junior mark that is in color, these marks will be highly similar. Where protection is desired precisely for the color scheme of the logo, it should be filed in color.
Specification of goods and services
The application must contain a list of goods and services that must be classified in accordance with the Nice Classification. The tool TMClass, which provides access to the Harmonised Database, helps to identify acceptable and unacceptable terms.
Should I file for class headings or for specific goods or both?
In general, the EUIPO still allows class headings, with the exception of 11 terms that have been identified as too vague for acceptance (further to the CJEU decision in IP TRANSLATOR). These 11 terms are mostly those that consist of “goods made of these materials” in the various classes (for a full list of unacceptable terms and explanations, clickhere).
Whether to go for class headings or precise goods depends on the desired scope of protection, the concerns about potential conflicts with third parties’ rights, and longer term the question what the trademark is going to be used for. While you want to provide for – 8 – potential growth and expansion, you also want to avoid claiming an unnecessarily broad list, thereby potentially attracting unnecessary oppositions.
It is of course possible to go broader than the current or immediately foreseen use of the mark. For five years following registration of the EUTM, it is not subject to the use requirement. Then it becomes vulnerable to revocation due to non-use for those goods and services for which it has not been used. Where the mark has been used for a number of different goods within the class heading, normally that can be maintained. Where it has been used for only a sub-category of goods, it will be partially cancelled. If it is known already for which goods the mark should be used it makes sense at least also to apply for an appropriate sub-category of goods to avoid that, later on, the registration is reduced to the specific items for which the mark has been used.
The official fee (850€ for the first class for electronic filing, 50€ for the second and 150€ for each additional class) must be paid within one month from filing, although, to be eligible for Fast Track treatment, payment must be made at the time of filing. Seniority and priority must be claimed within two months from filing the application. As from 1 October 2017, priority claims must be raised together with the application.
The application can be filed in any of the 24 official languages of the EU (full list here). A second language which is different from that of the application must be indicated and this must be one of the five EUIPO languages English, German, French, Italian or Spanish.
FAST TRACK EUTM APPLICATIONS
The EUIPO now allows the filing of EUTMs on a “Fast Track”. Fast track applications are published in about half the time of regular applications and often within less than a month.
To get on the fast track, no additional fees are required. The sole requirements are that the application is filed electronically, that payment is made immediately (rather than within the one-month time limit that usually applies to payment), and that the goods and services are picked from the TMClass database.
If there is a chance that the trademark suffers any changes in the short term (such as from color to black and white etc.), if there is uncertainty as to the correct owner or flexibility is desired for any other reason, or if TMClass does not contain the desired language for the specification, a regular EUTM application can be filed and the fee payment withheld until one month from filing. The delay incurred by this should not exceed four weeks.