European Union TradeMarks

European Union TradeMarks

TradeMark Registration in Europe (EUTMs)

European Union Trade mark registration (EUTM)

Register your Trade Mark in Europe (European Union)

The European Union Trade mark (EUTM) system confers a single Registration with uniform and simultaneous protection throughout the entire European Union as a whole (exclusive rights cover 28 member states), that means you cannot limit the geographic scope of protection to a few Member States and exclude the rest. It is the most cost-effective alternative to national trade mark filings in individual countries of the EU, making the EU Trademark the best choice for many businesses who are trading abroad, or plan to expand their company into the European market.

European Union Intellectual Property Office (EUIPO)
The EU trademark registration procedure is ruled by the European Union Intellectual Property Office (EUIPO), located in Alicante, Spain.

Key reforms to the Community Trade Mark Regulation and the OHIM after 23 March 2016

The Regulation No. 2015/2424 amending the Community trade mark regulation (CTMR) entered into force on March 23, 2016 and changed the Office for Harmonization in the Internal Market (OHIM) which became the European Union Intellectual Property Office (EUIPO), and the Community trade mark (CTM) was renamed the European Union trade mark (EUTM). There are several changes to consider, namely:

Ancient Office for Harmonization in the Internal Market (OHIM)

Changes to Fees. There is an overall decrease in the fees for new applications and the renewal of existing registrations. – Application Fees. The official fee will no longer cover up to three classes. The basic application fee will now include a single class which is now cheaper, applying for a second class is the same as the old official fee and only if a third or more classes are included will increase the official fees but not significantly with respect to the old additional fee. – Renewal Fees. Renewal fees have been reduced significantly and affecting particularly those EUTMs covering multiple classes. – Other Fees. Those for oppositions, appeals and cancellation actions have been reduced slightly.

Registration of New Types of Marks. It is easier to register unusual or non-traditional marks and their identifying features, such as holograms, motion marks, digital icons or sound files, since EUTMs no longer have to be represented graphically as long as their protection matter are clear, precise, easily accessible and objective.

Identification of Goods and Services – Nice Class Headings. According to the judgment in the 2012 IP TRANSLATOR case C-307/10, all EU Trade marks including class headings will only protect the literal meaning of the goods and services specified in the heading and will no longer cover all goods in that class. Therefore, some marks that specify the class heading should be checked to ensure that those key commercial goods and services are clearly and precisely specified or seek further protection to cover all goods and services of interest. For this purpose, the Office will provide a six-month transitional period from March 23, 2016 ( up to September 23, 2016) for those marks filed before June 22, 2012 to apply for a declaration under Article 28 to revise the scope of the specification of a class heading in order to identify those extra terms beyond the literal meaning of the class heading not specifically mentioned in the old trade mark application, by choosing them from a fixed list of terms as specified by the Nice classification in force at the filing date.

Renewal Date. From now on, the 10-year renewal expiry date will have to be calculated from the anniversary of the EUTM’s filing date and should be renewed within the six-month period prior to said due date. Therefore, this period will no longer be extended until the end of the month of its anniversary.

Preventing Counterfeiting Goods in Transit. Holders of EUTMs and national trademarks in the EU will be able to take action and prevent third parties from bringing counterfeit goods in transit through the European Union by the seizure of those goods, even if this infringement takes place outside of the EU and the goods are not sold in a EU member state.

Own Name Defense. The own name defense is now only available for natural persons but no longer possible for companies as a defense to infringement claims on the ground that the use of a trade mark is the same as its corporate name.

Other Reforms. Many other relevant changes have been introduced in the Regulation, such as for the registration of certification marks, designations of origin or geographical indications which now can serve as a basis for opposition, the proof of use period in oppositions and cancellations, the opposition period for International Registrations designating the EU, the establishment of a mediation center by EUIPO with the aim of arriving at a friendly settlement of disputes, just to name a few.

 

E.U. Countries

The European member states protected simultaneously by the European Union trade mark system are:

E.U.

(AT) Austria
(BE) Belgium
(BG) Bulgaria
(CY) Cyprus
(HR) Croatia
(CZ) Czech Republic
(DK) Denmark
(IE) Ireland

(EE) Estonia
(FI) Finland
(FR) France
(DE) Germany
(GR) Greece
(HU) Hungary
(IT) Italy
(LV) Latvia
(LT) Lithuania
(LU) Luxembourg
(MT) Malta
(NL) Netherlands
(PL) Poland
(PT) Portugal
(RO) Romania
(SK) Slovakia
(SI) Slovenia
(ES) Spain
(SE) Sweden
(GB) United Kingdom

Map of E.U. Countries

What Can Be Registered?

Any sign can be registered as long as its protection matter is clear, precise, easily accessible and objective, in particular words, including personal names, designs, letters, numerals, the shape of goods, their packaging, slogans, sounds, solely or combined, among others. Besides the protection of individual marks, the EUIPO allows registration of collective and certification trade marks, when certain requirements are met.

Who May Apply?

All natural persons and legal entities, regardless of their citizenship or residence.

Mandatory Use

A EUTM shall be put to genuine use in at least one part of the European Union (only in a single EU member state or in a part thereof of the EU) within the initial five-year period following registration. The best defense against revocation action on the grounds of lack of use is to use the EUTM genuinely and continuously. You can lose it if you do not use it.

Validity

Exclusive rights are conferred for ten years and can be renewed indefinitely for subsequent periods of ten years. All rights in a EUTM Registration date back to the filing date and not when the mark is granted.

Courts For Trademark Infringement

Legal actions involving trademark infringement or unfair competition in Spain are to be taken before the competent Commercial Court located in the city of the Higher Court of Justice within the autonomous community where the defendant is domiciled, or alternatively where the infringement has taken place or had effect. When the claimant is invoking a EUTM, this is to be held by the Commercial Court of Alicante, Spain. Appeals lodged against decisions made by the Commercial Court of Alicante are revised by the Provincial Court of Appeal of Alicante.

 

Main Points and Advantages of EUTMs

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How Abecsa Can Help You

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European Union Trade Mark Procedure and Time Scale

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International Registrations Designating the European Union

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Information and Requirements to File a EUTM Application:

  • The full name and address of the applicant(s)-holder(s).
  • The nationality or country of establishment of the applicant(s)-holder(s).
  • VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
  • Full details of the trademark and if appropriate, and a good representation of the logo or design, indicating all generic colors to be described.
  • Nice classes to be applied for and list of preferred goods and services sold or to be sold under the trade mark to be specifically included (45 classes of goods and services).
  • The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
  • The details of the national application(s) on which Seniority is to be claimed, if appropriate.
  • Your instructions on how we should proceed and approval of the likely costs.
  • Your payment by bank transfer within 20 days from application and invoice date.
  • (No POA is required by this Office any longer).

 

Contact Us

Via our contact form if you need advice or our fees on any trademark issues such as:

  • Registering your brand in the European Union or an International Registration designating this Regional Office, or looking for the associated tradevmark searching and watching services.
  • Seeking our Attorney’s representation and appointment in your trade mark application or registration.
  • Opposing a EU trade mark applied for registration by others.
  • Defending your challenged EUTM or IR designating the EU, from oppositions, appeals or cancellation actions.
  • Taking legal action against infringement of your trademark right in Europe being used by another person or company without your consent.
  • Renewing your EU trade mark trademark for an additional 10 year period.
  • Licensing the use of your EUTM or selling it by recording the assignment of all the trademarks to others.

 

Confidentiality

It would be advisable that you do not disclose your trade mark protection plans to avoid others registering it before you. However, you can safely discuss them with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.