European Union Trade Marks - The Basics

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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. However, the EUTM system is much cheaper than obtaining and renewing up to 27 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}

Who can apply?

Any natural or legal person from anywhere in the world can apply for an EUTM registration.

How do I apply?

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 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:

• by the EUIPO if the application was not filed in one of the five working languages, and if requested by the applicant,
• by an opponent.

It is also possible to apply for an EUTM via the International Madrid Protocol 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.

What can be applied for?

Any sign capable of distinguishing goods or services is registrable. This includes the shape of goods, their packaging, a colour and some sounds as well.

Not registrable are:

• descriptive or otherwise non-distinctive marks (unless they have become distinctive through use in the EU);
• marks which consist exclusively of shapes or other characteristics which result from the nature of the goods;
• marks which consist exclusively of shapes or other characteristics which are necessary to obtain a technical result;
• marks which consist exclusively of shapes or other characteristics which add substantial value to the goods;
• marks which are generic or customarily used in the trade or industry concerned;
• marks liable to mislead the public, for example in relation to the nature, quality or geographical origin of the goods and services;
• marks contrary to public policy, for example because they are considered offensive or blasphemous in any EU country;
• marks protected by Article 6ter of the Paris Convention (national flags and emblems etc.);
• marks consisting of or containing protected designations of origin (PDOs), protected geographical indications (PGIs), and some other protected terms.

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:

There are also many other languages spoken and understood by at least part of the EU. Issues such as descriptiveness can give rise to a language spoken in just one EU member state, 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 to group goods and services into 45 different classes.

Examination and search

The EUIPO only examines on absolute grounds, as discussed above.  EUIPO will conduct an automated 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 actively 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 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. This is commonly called a "watch service".

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 the goods/services. Note that registered marks with a reputation have a broader scope of protection.

Opposition

If a directly filed application passes the EUIPO examination on absolute grounds, it is advertised for opposition purposes. The period in which an opposition can be filed lasts for three months from the date of publication. For EUTM designations of International Registrations the opposition period differs and it is possible that it could commence before objections on absolute grounds are resolved.

Oppositions can be filed by:

• proprietors of earlier applications/registrations (both EUTM and national marks);
• owners of unregistered marks of more than local significance, if the relevant national law gives them the right to prevent use of the EUTM applied for;
• proprietors of marks that fall under Article 6bis of the Paris Convention, namely well-known marks;
• any person authorised to exercise the rights arising from a protected designation of origin or a geographical indication.

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. This means that 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 International Madrid Protocol systems 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 national applications in the EU member states, retaining the original filing date (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.

Observations

Until an EUTM application matures to registration 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.

Seniority

If you already own a national registration(s) and/or designation(s) of an International Registration in one or more EU countries and then file an EUTM application or obtain an EUTM registration for the same mark covering all EU countries, you can record the date of filing of your national registration(s)/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.

Use

An EUTM registration should 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 or more after registration the EUTM may become vulnerable to cancellation for non-use.

However, a reasonable level of genuine use of the EUTM in a significant part of the EU may potentially be enough to constitute use in the EU, allowing you to retain protection for the mark throughout the EU. Borders of EU Member States do generally not play a role in this context, but it has already been found by case law that use in a single EU Member State can be sufficient to establish genuine use of the EUTM.

Exhaustion of rights

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 its consent, unless certain exceptions apply.

Invalidation

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.

Assignment

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 is registered at the EUIPO which records and publishes the details of the new owner.

Licensing

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.

Registration periods and renewal

An EUTM registration lasts for 10 years from its application date and is renewable indefinitely for terms of 10 years.

Current members of the EU

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