EU & Trademarks

European Trademark

The European Community Trademark allows for a single unitary trademark enforceable directly throughout the EU. It is necessary to register the trademark. It may consist of signs capable of being represented graphically, including names, designs, letters, numerals, and the shape of goods or packaging. The signs must be capable of distinguishing the goods and services of one business from that of another.

The community trademark confers the owner with the exclusive rights to prohibit third parties from the following for commercial purposes;

• using a sign which is identical to the trademark in relation to goods or services which are identical with the trademark.
• using the sign where there is a likelihood of confusion with another trademark.
• using a sign which is identical to or similar to the community trademark in relation to goods or services which are not similar to those for which the community trademark is registered, where this use takes advantage of the repute and distinctive character of the trademark.

The owners of a Community trademark may not prohibit third parties from doing the following for commercial purposes;

• using their own name and address.
• indicating characteristics of the goods such as kind, quality, or quantity.
• using the trademark where it is necessary to indicate the purpose of a product or service as accessories or spare parts.

The owner of a community trademark must make genuine use of it for the 5 years following registration. They may be subject to sanctions for non-use if they do not.

Application

The community trademark may be filed with

• the Office for the Harmonizing of the Internal Market.
• the central industrial property office of the state.
• the Benelux Office for Intellectual Property.

Applications filed other than at the central office are transmitted to the OHIM after filing.

The application must contain the requisite details in respect of the mark, the goods and services in respect of which it is requested. A filing fee must be paid. Once documents are produced and the fee is paid, the application is given a date.

A person who has registered a trademark in one of the states pursuant to the Paris Convention or the WTO Convention shall enjoy, for the purpose of filing a community trademark for the same mark, a right of priority for a period of six months from the date of filing of the first application. The owner of the earlier trademark registered in the state, who files an identical application for a trademark, intended as a community trademark, may claim the seniority of the earlier trademark.

Once filed, the office examines whether it meets the conditions for a community trademark. The publication will be made to allow third parties to opposed granting of the trademark on the basis of earlier rights. If the application for a trademark meets all the requirements and is either accepted or not opposed, it is published.

Rights

The Community trademark lasts for 10 years from the date of filing. Registration may be renewed for another 10 years. This must be filed within six months before the end of the protection period.

The rights of a proprietor may be declared revoked

• if the trademark has not been subject to genuine use in the EU for five years.
• the trademark has become the common name for the product or service.
• it is of such a nature so as to deceive the public as to the nature, quality, or geographical origin of the goods.

There are appeal provisions to a board of appeal.

It is possible to file for a collective trademark. This may be done by associations of manufacturers, producers, suppliers, traders, or other equivalent bodies.

The proceedings relating to community trademarks are taken in courts designated by the member states as having jurisdiction. The European judgments regulation determines which court has proper jurisdiction.

The applicant or owner of a community trademark, may, in some cases, request it be converted into a national trademark.

European Union trade mark

Regulation (EU) 2017/1001 on the European Union trade mark

It establishes EU-wide rules and conditions for the granting of an EU trade mark.

It codifies and replaces Council Regulation (EC) No 207/2009 and its numerous successive amendments.

EU trade mark

Any person or company, including authorities established under public law, may obtain an EU trade mark through registration.

It may consist of any signs, in particular words (including personal names), designs, letters, numerals and the shape of goods or of their packaging, provided that such signs are capable of:

distinguishing the goods or services of one business from those of another; and
being represented on the register of trade marks in such a way that the public and the authorities know exactly the subject matter that is being protected.
Owner’s rights

It grants the owner exclusive rights, which prohibit third parties from using any of the following for commercial purposes:

any sign which is identical with the EU trade mark in relation to goods or services which are identical with those for which the EU trade mark is registered;
any sign where there is a likelihood of confusion with another trade mark;
any sign which is identical with, or similar to, the EU trade mark in relation to goods or services which are not similar to those for which the EU trade mark is registered, where use of that sign takes advantage of the reputation and distinctive character of the trade mark.

However, the owner of the EU trade mark may not prohibit third parties from using the following for commercial purposes:

the owner’s own name or address;
indications concerning characteristics of goods or services such as the kind, quality or quantity;
the trade mark where it is necessary to indicate the intended purpose of a product or service, as accessories or spare parts.

Application

Applicants must file an application for an EU trade mark with the European Union Intellectual Property Office (EUIPO).

The application must contain the following information:

a request for the registration of a EU trade mark,
information identifying the applicant,
a list of the goods or services in respect of which the registration is requested,
a representation of the trade mark.

Applicants must also pay an application fee. The application fee must be paid within 1 month of the filing date — the date on which the documents are filed with the EUIPO.

Registration

Once the application has been filed, EUIPO will examine whether it meets all the conditions for the granting of an EU trade mark.
Publication of the application will allow third parties opposed to the granting of the trade mark to do so, on the basis of earlier rights, in opposition proceedings.
If the application meets all the required criteria and no opposition is either entered or accepted, then the trade mark registration is published.

Duration and renewal

EU trade marks are registered for a period of 10 years from the date of filing of the application.
Registration may be renewed for further periods of 10 years. The renewal application must be filed 6 months before the end of the validity of the registration.

Surrender, revocation and invalidity

An EU trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. The rights of the owner may also be revoked if:

the trade mark has not been subject to genuine use* in the EU for 5 years;
the trade mark has become the common name for a product or service;
the trade mark could deceive the public as to the nature, quality or geographical origin of the goods or services.
The regulation also establishes grounds for the invalidity of the trade mark. These grounds include, for example, cases where the applicant acted in bad faith when filing the application for the trade mark.

EU collective marks

When an application for registration is filed, it is possible to designate an EU trade mark as being collective. The following are authorised to file EU collective marks — associations of:

manufacturers
producers
suppliers of services
traders
legal persons governed by public law.
EU certification marks

It is also possible to designate an EU trade mark as a certification mark. The owner of such a mark certifies the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics (excluding geographical origin) of the certified goods and services.

Legal action

Regulation (EU) No 1215/2012 applies to proceedings relating to EU trade marks and applications for EU trade marks, as well as to simultaneous and successive actions on the basis of EU and national trade marks.

EU countries must designate ‘EU trade mark courts’. These courts have exclusive jurisdiction in all disputes concerning the infringement and validity of EU trade marks.

Application & Background

It has applied since 1 October 2017.

EUIPO replaces the Office for Harmonization in the Internal Market from 23 March 2016 in line with Regulation (EU) 2015/2424 which amended Regulation (EC) No 207/2009 both of which were replaced by Regulation (EU) 2017/1001 .

For more information, see:

EUIPO — trademarks.

Genuine use: if a company registers an EU trade mark, uses it for a period and then stops using it for a continuous period of 5 years, the trade mark may be revoked. This is because there is no value in giving protection to trademarks if they are not being used and there is no interest in preventing another company, that might legitimately wish to use the mark, from using it.

MAIN DOCUMENT

Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, pp. 1-99)

last update 13.02.2018

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Trademark Directive

A trademark can be refused prior to registration, or may subsequently be declared invalid, for a number of reasons including that:

• it is not distinctive;
• it is merely descriptive;
• it consists of signs which are customary in the current language of the trade in question;
• it is contrary to the principles that underpin constitutional laws and regulations or accepted principles of morality;
• it is of such a nature as to mislead the public, for instance, as to the nature, quality or geographical origins of the product or service.

A trademark is also refused or may be declared invalid if it is identical or similar to a trademark that has been registered previously.

Rights

The owner has an exclusive right to the trademark that has been created. They may prohibit anyone from using a sign which is identical or so similar as to lead to a risk of confusion in the consumer’s mind.

The owner may not prohibit the use of the trademark by those acting in the course of their business, where the following need to be indicated:

• a name or address of a third party, when the latter is a natural person;
• features of goods or services covered by the trademark;
• the intended purpose of goods or services.

The proprietor of a trade mark must make genuine use of the trademark within 5 years of its registration. Use interrupted during a continuous 5 year period shall subject the trademark to sanctions for non-use.

Application

Applications must contain the following:

• a request for registration;
• information identifying the applicant;
• a list of the goods and services for which registration is requested;
• a representation of the trademark, which allows both the authorities and the public to ascertain what is being protected.

The application is subject to the payment of a fee to be determined by the EU country concerned.

Trademarks are registered for a period of 10 years from the date of filing. They can be renewed for a further 10 years at the request of the owner on the payment of a renewal fee. The owner will be informed by the national trademark office of the expiry of their trademark 6 months in advance of that expiry date.

A registered trade mark confers on its proprietor exclusive rights therein. The proprietor is entitled to prevent all third parties not having his consent from using it in the course of trade.

Disuse

Where the proprietor of an earlier trade mark has acquiesced, for a period of five successive years, in the use of a later registered trade mark, he is no longer entitled either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.

Unless there are proper reasons for non-use, the proprietor of a trade mark may have his rights forfeited if:

• within a period of five years following the date of completion of the registration procedure, he has not put the trade mark to genuine use in the Member State concerned in connection with the goods or services in respect of which it is registered; or
• if, during an uninterrupted period of five years, the trade mark has not been put to genuine use.

The proprietor of a trade mark may also have his rights forfeited where, in consequence of his acts or inactivity, the mark has become the common name in the trade for a product or service in respect of which it is registered or where, in consequence of the use made of it by the proprietor or with his consent, the trade mark is liable to mislead the public.

EU trade mark law (national registrations)

Directive (EU) 2015/2436 to broadly align EU countries’ laws relating to trade marks

It aims to align EU national laws and procedural rules for the registration of trademarks.

It forms part of a reform package along with the revision of Regulation (EC) No 207/2009 on the Community (EU) trade mark. The package is designed to make trade mark registration systems all over the EU more accessible and efficient for businesses.
This directive sets out the basis for the adoption of national laws for trade marks in respect of goods or services which are:

• the subject of registration as individual trade marks, collective marks*, guarantee or certification marks in an EU country, or in the Benelux Office for Intellectual Property;
• the subject of international registration having effect in an EU country.

Format

A trade mark can be any sign capable of being represented graphically (particularly words, including personal names, or designs, letters, numerals, the shape of goods or of their packaging). The sign must be capable of distinguishing the goods or services of one person or company from those of another.

Grounds for refusal

A trade mark can be refused prior to registration or may subsequently be declared invalid, for a number of reasons including that:

• it is not distinctive;
• it is merely descriptive;
• it consists of signs which are customary in the current language of the trade in question;
• it is contrary to the principles that underpin constitutional laws and regulations or accepted principles of morality;
• it is of such a nature as to mislead the public, for instance, as to the nature, quality or geographical origins of the product or service.

A trade mark is also refused, or may be declared invalid, if it is identical or similar to a trade mark that has been registered previously.

Rights

The owner has an exclusive right to the trade mark that has been created. They may prohibit anyone from using a sign which is identical or so similar as to lead to a risk of confusion in the consumer’s mind.

The owner may not prohibit use of the trade mark by those acting in the course of their business, where the following need to be indicated:

• a name or address of a third party, when the latter is a natural person;
• features of goods or services covered by the trade mark;
• the intended purpose of goods or services.

Use

The proprietor of a trade mark must make genuine use of the trade mark within 5 years of its registration. Use interrupted during a continuous 5 year period shall subject the trade mark to sanctions for non-use.

Registration procedure

Applications must contain:

• a request for registration;
• information identifying the applicant;
• a list of the goods and services for which registration is requested;
• a representation of the trademark, which allows both the authorities and the public to ascertain what is being protected.

The application is subject to the payment of a fee to be determined by the EU country concerned.

Duration and renewal

Trade marks are registered for a period of 10 years from the date of filing.
They can be renewed for a further 10 years at the request of the owner on the payment of a renewal fee. The owner will be informed by the national trade mark office of the expiry of their trade mark 6 months in advance of that expiry date.
This directive repeals and replaces Directive 2008/95/EC as of 14 January 2019.

Application & Background

It applies from 12 January 2016. EU countries have to incorporate it into national law by 14 January 2019.

For more information, see ‘Trade mark protection in the EU’ on the European Commission’s website.

Collective marks: When an application for registration is filed, it is possible to designate a trade mark as being collective. Associations such as manufacturers, producers or suppliers of services may apply for such a mark.

ACT

Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ L 336, 23.12.2015, pp. 1-26)

Successive amendments to Directive (EU) 2015/2436 have been incorporated into the original document. This consolidated version is of documentary value only.