EUROPEAN UNION TRADE MARKS - THE BASICS
Under the European Union Trade Mark system, the proprietor of a European Union Trade Mark (EUTM)1 has a single, unitary registration, enforceable throughout the European Union (EU). National trade mark systems still operate alongside the EUTM system (with a Benelux registration covering Belgium, The Netherlands and Luxembourg) and the national systems may remain the most suitable option for some applicants, or else the International Registration system. However, the EUTM system is much cheaper than obtaining and renewing up to 26 separate national registrations to cover the EU member states. The EUTM system is administered by the European Union Intellectual Property Office (EUIPO)2, based in Alicante, Spain.
1 previously known as a Community Trade Mark (CTM) | 2 previously known as OHIM
Any natural or legal person can apply for an EUTM registration.
Applications must be filed directly at the EUIPO.
Professional representation is optional for the filing of an EUTM application, but for almost all other actions before the EUIPO, any applicant, proprietor or opponent who is not a resident of the European Economic Area (EEA), which consists of the European Union, Iceland, Liechtenstein and Norway, must be represented professionally by either a trade mark attorney in the EEA, or by a legal practitioner qualified and working in the EEA.
An application can be filed in any EU language. All applicants must also choose a second language from the five working languages of the EUIPO (English, French, German, Italian and Spanish) and this second language can be used:
It is also possible to apply for an EUTM via the Madrid Protocol (International Registration) system if certain conditions apply; please see our information sheet on the Madrid Protocol for details. Although the general principles detailed in this sheet apply to the designation of the European Union under the Madrid Protocol, there are some procedural differences, particularly relating to the sequence of examination and opposition, and these are dealt with in a separate information sheet.
Any sign capable of distinguishing goods or services is registrable. This includes the shape of goods, their packaging, their colour and some sounds as well.
Not registrable are:
These are all objections an examiner can raise on “absolute grounds”, namely upon an assessment of the inherent registrability of the mark.
Remember that there are 24 different official languages of the EU:
Therefore, issues such as descriptiveness can give rise to an official objection even if the problem relates to just one EU language, as an EUTM is a unitary right.
One application can cover any number of classes. There is an additional fee for each class. The International (Nice) Classification system is used.
The EUIPO only examines on absolute grounds, as listed above. The examiner will conduct a search for earlier EUTMs and EU designations of international registrations which could conflict with the application. The applicant can request that they receive the results of this search (at no cost) at the time of filing their EUTM application. If a prior EUTM registration or application is found, the owner of the mark will be notified. However, it is up to the owner of the prior registration or application to oppose the EUTM application.
It is possible to request (at extra cost) that searches for possibly conflicting prior marks be carried out by some of the national offices. However many national offices (including those in the United Kingdom, France, Germany and Italy) do not carry out searches, and the search reports carried out by those who do are of limited value because of the lack of detail. If a conflicting mark is found, only the applicant for the mark being examined is notified. Proprietors of earlier marks are expected to keep a look out for marks that may conflict with their registrations.
For there to be a conflict, there must be a likelihood of confusion on the part of the public due to the identity or similarity of the marks and goods/services. Note that registered marks with a reputation have broader rights.
If a directly filed application passes the EUIPO examination on absolute grounds, it is advertised for opposition purposes. The opposition period lasts for three months. For EUTM designations of International Registrations it is possible that the opposition procedures could commence before objections on absolute grounds are resolved.
Oppositions can be filed by:
The losing party in any opposition may have to pay some of the other side’s costs.
Note that an opposition can only be based on prior rights, and not on absolute grounds. So an opposition cannot be on the basis, for example, that a mark is descriptive. Nor can it be on the ground that a mark was applied for in bad faith – this is an absolute ground.
A feature of the EUTM system is that if an application is successfully opposed by someone on the basis of a right in any EU country, you cannot get an EUTM registration at all. Instead, if you wish to maintain protection in the other EU countries of interest you will have to apply for separate national registrations (possibly via the Madrid Protocol in the case of a failed designation of the EU) in any other EU countries that are available, through a process called “conversion”. The EUTM application is converted into EU national applications, retaining the original filing (or priority date if applicable) of the EUTM application, which are then subject to the application processes of the national offices. Please see our information sheet entitled “EUTM – Oppositions” for more details.
After publication of an application, third parties can file “observations” that the mark is not acceptable on absolute grounds. If it is felt that an observation is well-founded, the Examiner shall issue an objection, and may eventually refuse the application. Applicants will be given copies of observations filed and have the opportunity to respond.
If you already own a national registration(s) and/or designation(s) of an International Registration in one or more EU countries and then obtain an EUTM registration for the same mark covering all EU countries, you can record the date of filing of your national registration/designation(s) against your EUTM. This can provide proof of ownership of the mark from a date that is earlier than the filing of the EUTM in the countries concerned.
Seniority can be claimed at the time of filing the EUTM application, within two months of the filing date of the EUTM application, or after registration. Please see our information sheet entitled “EUTM – Seniority” for more details.
An EUTM registration must be put to “genuine use” in the EU within five years of registration.
If it is not used for a continuous period of five years, the registration will become vulnerable to cancellation for non-use.
However, a reasonable level of genuine use of the EUTM in only one or two EU countries may potentially be enough to constitute use, allowing you to retain protection for the mark throughout the EU, particularly if the EU countries in question are larger territories.
The right of an EUTM proprietor to sue for infringement is “exhausted” in respect of goods which have been put on the market anywhere in the EEA by the owner of the EUTM or with his consent.
An EUTM may be invalidated if it is shown that it should not have been registered on absolute or relative grounds.
However, the validity of an EUTM cannot be attacked by the owner of a prior right if he has acquiesced to the use and registration of the EUTM for five years or more.
As it is a unitary registration, an EUTM cannot be assigned for part of the EU. However an EUTM can be assigned separately for some or all of the goods or services for which it is registered. An assignment needs to be registered at the EUIPO if it is to be effective in relation to third parties.
An EUTM can be licensed for the whole or part of the EU and may be licensed for some or all of the goods or services for which it is registered.
A licence needs to be registered at the EUIPO if it is to be effective in relation to third parties.
An EUTM registration lasts for 10 years from its application date and is renewable indefinitely for terms of 10 years.
For information on the impact of EU enlargement on the EUTM, see our sheet Enlargement of the EU – effect on European Union Trade Marks & Community Designs.
This information is simplified and must not be taken as a definitive statement of the law or practice.