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TRADE MARKS: WHAT ROUTE TO PROTECTION?

TRADE MARKS: WHAT ROUTE TO PROTECTION?

The European Union Trade Mark (EUTM)1 and the Madrid Protocol (International Registration), and the linking of the two systems, gives United Kingdom owners of trade marks the  possibility of seeking protection for their trade marks more economically and efficiently as compared with filing a separate national application in each country of interest. Our pages on the EUTM and the Madrid Protocol give an outline of the two systems; this page gives a general comparison between a directly filed EUTM, designating individual European Union (EU) countries in an International Registration and designating the European Union in an International Registration, and how these  systems can be utilised, both for new trade marks and to rationalise an existing portfolio, primarily as regards the European Union from the viewpoint of a UK based trade mark owner.

New trade marks

If most, or all, of the European Union countries (i.e. Austria, Belgium, Bulgaria, Croatia, Cyprus (South), Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom) are of interest, but no non-EU countries that are in the Madrid Protocol, and there is not a suitable UK application or registration already in existence, then an EUTM is a more economical route than either designating these countries (except for Malta which would have then to be the subject of a directly filed application) under the Madrid Protocol or just  designating the EUTM under the Madrid Protocol.

This is because of the fee structure for the Madrid Protocol and because a “home” trade mark application or registration covering all the goods/services of interest is required first so as to provide the basis for the International Registration, and so designating the EU (which obviously covers the UK) under the Madrid Protocol gives rise, of necessity, to some duplication for a UK based applicant. (This factor does not arise for non EU based applicants, as their “home” application or registration would not normally be for an EU country.)

If however a suitable “home” application or registration already exists, then if just some of the EU countries are required (and especially if an International Registration were to be applied for in any case), national designations under the Madrid Protocol may be a more economic route; if on the other hand most or all of the EU countries are required, then either a directly filed EUTM or a designation of the EU under the Madrid Protocol would be more cost effective, the latter particularly if an application for international Registration were being made in any event.

Of course there are various factors, both cost and non cost, and each case has to be looked at individually.

Comparative advantages & disadvantages

European Union Trade Marks and European Union designations of International Registrations

Advantages include:

  • Provides protection for all EU countries, even those not of current interest – there is no need to seek protection for them at a later stage. However, see below regarding risk of opposition and official objections on absolute grounds.
  • A trade mark usually needs to be used in each country to keep its registration valid in that country. However, an EUM is a unitary registration – therefore a reasonable amount of use of the mark in only part of the EU should be sufficient to keep it valid for the whole EU.
  • A prior UK application or registration is not required in order to file an EUTM.
  • The EUIPO2 does not examine applications in relation to prior trade marks. The owners of such prior marks and other prior rights may oppose an EUTM application after publication. The fact that owners of prior trade marks and other rights must take active steps against an EUTM application means that trade marks that are still registered but in which the owners no longer have an interest do not cause problems.

Disadvantages include:

  • During its official examination, an EUTM application or an EU designation may be objected to on absolute grounds that are perhaps only relevant to one country (for example the mark is a descriptive word in Portugese). A valid objection for even one country means that the entire application is rejected. It is however possible to convert into national applications (or, in the case of an EU designation of an International Registration, national designations (except for Malta)), (keeping the EUTM or EU designation application date) for those countries where the mark is not objectionable, but this is more costly than if national applications or a Madrid Protocol application designating the countries individually had been filed at the outset.
  • Increased risk of opposition. Prior rights in even one EU country (perhaps even one that is not in fact of interest to you) can provide the basis of an opposition. If the opposition is successful, then there is the possibility of converting into national applications (or, in the case of an EU designation of an International Registration, national designation, except for Malta), (retaining the date of the EUTM or an EU designation application) except for countries where prior rights were successfully raised in the opposition. Again this is more expensive than if national applications had been filed or national designations made to start with.
  • Most rights in an EUTM only start at registration or protection for an EU designation not application. Registration can be considerably delayed if there is an opposition against the EUTM application or EU designation which is eventually settled.

Madrid Protocol (EU International Registration) as opposed to direct filing

Madrid advantages include:

  • Only the countries of actual interest need be included (assuming individual EU countries designated rather than the EU).
  • If problems arise in one designated country, this can be dropped without affecting the others.
  • Rights may be achieved more rapidly for some EU countries than for a directly filed EUTM; this may be important if it is thought that infringement is likely to take place at an early stage.
  • Further countries can be added to an International Registration later, at less cost than a completely new International Registration or a national application, especially if several are added at one time.
  • The cost of designating some countries is very modest, for example Benelux and Germany; even if an EUTM application is being filed or the EU is being designated it may be worthwhile in some circumstances designating these in a Madrid Protocol application as well, so as to gain earlier protection.
  • It is possible to assign some designations and not others.

Madrid disadvantages include:

  • Rights in each country are separate; use in one country would not, in general, assist in maintaining validity in other countries (except for the designation of the EU, where reasonable use in one EU country may be sufficient).
  • A prior UK or EUTM application or registration is required. For its first five years an International Registration is dependent upon the United Kingdom application or registration upon which it is based. If the United Kingdom application or registration fails for any reason, the International Registration will also fail, though there is then the possibility of filing national applications having an effective date of the International Registration.
  • The dependency on a “home” application or registration also means that the specification of goods/services of the International Registration has to be the same as, or narrower than, the “home” application or registration.
  • In some countries the designation will be examined by the national office in relation to prior trade marks and may be objected to on the grounds of a prior mark or marks. These prior marks may not have been used for years and may no longer be of interest to their owners yet they still remain a bar and have to be dealt with if the objection is to be overcome.

European Union trade mark via Madrid Protocol (International Registration) as opposed to direct filing

Advantages include:

  • If an application for International Registration is being filed in any case, the costs of covering the EU are lower than for a direct filing; renewal costs are also lower.
  • If the EU designation is withdrawn, refused or ceases to have effect, it can be converted into subsequent designations of EU member states (except for Malta, and with Benelux counting as one); this should give substantial cost savings over the other option, conversion to national applications, which is the only option for directly filed European Union Trade Mark applications and registrations.

Disadvantages include:

  • A prior UK application or registration is required. For its first five years the International Registration is dependent upon the UK application or registration upon which it is based. If the UK application or registration fails for any reason in that time, the International Registration will also fail, though there is the possibility of filing an EUTM application having an effective date of the International Registration.
  • The dependency on the UK application or registration also means that the specification of goods/services of the International Registration has to be the same as, or narrower than, the UK application or registration.

Existing registrations

For registrations for a given mark, depending upon the particular countries, the number of classes involved and when they are due for renewal, an EUTM application and/or an application for  international Registration to replace some or all of the national registrations that could be covered through one or both of these systems can give substantial cost savings and other benefits.

It should be possible to retain existing national rights, though this can be costly for some countries, if it wished for the continuance of the existing rights in a given country to be noted on the national register. Where national rights are being replaced by an EUTM or an EU designation, a request has to be filed – the continuance of the national rights does not happen automatically. Of course existing rights cannot be retained for goods/services that are not contained in the new application. It may (depending upon existing third party rights) be possible at no or relatively modest additional cost to extend the geographical scope of protection. Where a direct EUTM application is being filed, the range of goods and services covered may also be extended; protection via an International Registration is limited to the goods/services in the home application or registration.

The particular route that is most appropriate depends upon a number of factors including the further coverage required, the countries involved, when the various renewals are due and their expected cost. We will be happy to advise you on this.

1 previously known as a Community Trade Mark (CTM)
2 previously known as OHIM

This information is simplified and must not be taken as a definitive statement of the law or practice.

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