Tue 8th Nov 2016

Protecting your trade marks across the European Union at the EU Intellectual Property Office

Service: Trade marks

Sectors: Brand owners

The EU trade mark system is a money-saving, advantageous system for those interested in operating in EU states who want a system that is quick and easy to use. Brand owners can protect their trade marks in all member states of the EU by way of a single application.

Are there cost savings compared with directly filing national applications?

Yes, savings are made and a single application is filed. Generally, a straightforward EU trade mark application is similar in cost to filing in two separate national trade mark registries in the EU. There should also be savings in renewal fees and in administration costs.

 

Are there other advantages of the EU trade mark system?

It is less time consuming for brand owners to manage and you do not need a representative in every country in the EU.

 

There is one trade mark application and one registration to administer, covering many countries:

  • an EU trade mark is a single application;
  • you will have more control as to the language in which the case is conducted;
  • it leads to a single registration to administer;
  • you can renew it centrally; and
  • changes of owner, licences, assignments and cancellations are all done centrally at the EU Intellectual Property Office.

 

What is the time frame for an EU trade mark application?

The procedure can be very quick, sometimes taking as little as four months. Moreover, for no extra cost, you can ‘fast track’ an application, if you use previously accepted wording for the list of goods.

 

What is the procedure for the EU trade mark application?

The list of goods is checked for accuracy and classification and objections may be raised. The EU Intellectual Property Office can be asked to carry out a search for earlier EU-wide trade marks, or for an extra fee in some national trade mark offices. The EU Intellectual Property Office checks whether the mark is devoid of any distinctive character, wholly descriptive, generic, deceptive, or objectionable on certain other grounds.

 

Once any such issues have been dealt with, there is an opposition period of three months. If no opposition arises, applications usually proceed to grant. Renewal is only required every 10 years.

 

What if I already have rights in one, or more countries within the EU?

Where applicants have the same mark already protected in one of the national registers in the EU, they can claim seniority for overlapping goods. The EU Intellectual Property Office will check that the applicant already has the rights and then the effect of the EU trade mark registration in that country only will be back-dated in place of the national rights. You may then opt not to renew the national rights, if the EU trade mark registration is safely protected and secure, thereby saving renewal fees.

 

What if I only want protection in certain countries in the EU?

An EU trade mark registration is ‘all or nothing’ and must cover all EU states. Where a new country joins the EU, existing EU trade marks are automatically extended, without the need to pay any extra government fees. The protection in the new member state will date from when the state joins the EU, rather than the date the EU application was filed.

What if oppositions arise based upon rights in certain countries in the EU?

If an objection arises based upon rights in one, or a few EU countries, the EU trade mark may be convertible into national rights in other EU countries, on payment of further fees, retaining the original filing date.

 

What if I have already filed a trade mark application in the last six months for the same mark and overlapping goods elsewhere, either in an EU, or non-EU country?

If you have filed in the last 6 months for the same mark and overlapping goods, for example in the US, then you should be able to claim priority. The filing date of the EU application will then be backdated to the date of the initial filing, giving you earlier rights. This can be an advantageous way of getting earlier rights to those of others.

 

How does the EU trade mark system relate to the Madrid International System?

If you are the owner of Madrid International rights you can designate the EU Trade Mark Office as one of the states under the Madrid application and it will be examined by the EU Trade Mark Office. An EU trade mark right can also be used as the basis for a Madrid application where the applicant has the necessary links with the EU.

What if I fail to use my EU trade mark registration?

An EU trade mark can be cancelled by a third party if it has not been used in a five year period following its registration, without good reason. You do not need to demonstrate use to secure registration, renew a mark, or keep it on the register unless a challenge is made to the registration. These challenges generally only follow assertive action by the rights-holder.

 

What is the cost of an EU trade mark registration?

The filing cost depends upon the number of categories of goods/services (“classes”) at the time of filing. The costs after filing depend partly on the objections that arise which may include descriptiveness objections, or oppositions. We can give you definite costs for filing an EU trade mark application, having discussed with you the extent of your goods and services.

 

For advice on EU trade marks

For more advice on any aspects of trade mark protection in the UK, Europe and internationally, please contact James Cornish on 44 (0) 207 831 7929 or email james.cornish@pagewhite.com.

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis and answer any questions you receive from others about Brexit. Please note that the law may have changed since the date this was first published in November 2016.

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