European Union Trademark

A registered European Union Trademark extends its effect to all Member States of the European Union.

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European Union trademarks are registered in accordance to the Regulation on the European Union trade mark (the "EUTM Regulation") and a further Regulation implementing the EUTM Regulation.

Applications for European Union Trademarks are examined and registered by the European Union Intellectual Property Office (EUIPO) located in Alicante, Spain.

GENERAL FEATURES OF THE EUTM SYSTEM

According to the preamble of the Regulation, one of the central objectives of the European Union trademark is to guarantee the origin of the products or services that are sold or proposed to the public under said mark.

The European Union trade mark is characterized by its unitary aspect. Since it is registered for the whole European Union through a single procedure, to be valid it must be available and distinctive in all Member States of the EU.

The right to a European Union trademark is acquired by registration and not by mere use.

Furthermore, the EUTM Regulation is subject to the European Court of Justice’s interpretation of the Rome Treaty concerning the free circulation of goods and services between Member States. Consequently, European Union trademark owners may not object to any use of the trademark for products or services already marketed within the Community either by themselves or with their consent.

The EUTM Regulation defines not only the registration criteria but also the complete examination procedure, including the third party oppositions to registration and procedural guidelines in European Union trademark infringement cases.

- Who can apply for a European Union trademark?

Any natural or legal person, including authorities established under public law, may file for and own a European Union trademark.

- Choice between European Union , international and national trademark

Instead of replacing the various Member State national trademark systems or the International trade mark system, the European Union trademark system is designed to complement them. For example, a European Union trade mark may serve as the basis for an international trademark. International trademark applications may include the designation of the European Union trademark system.

- Cumulative protection

The same sign may be protected for the same goods and services both by a European Union trade mark as well as by one or several national trade marks in different EU Member States.

In case of multiple infringement actions based on the rights derived from these different trade marks, a Court must transfer the case to the court where the initial action was filed if the marks are identical. However, if the trade marks are only similar, the Court may simply stay the proceedings.

If a judgment has already been obtained based on one of these cumulative trade mark rights, any subsequent claim between the same parties based on another cumulative right will be dismissed.

- Consolidation of one or several national trademarks into a European Union trademark

The owner of one or several national trade marks may wish to obtain a European Union trade mark for the same sign.

If the prior national registered trade marks are all identical and belong to the same owner, the European Union trade mark application can claim "seniority" based on these prior national trade mark registrations for the identical goods/services. Upon registration of the European Union trade mark, these prior national trade mark registrations may then be abandoned.

- Conversion of a European Union trademark into national trademarks

If a European Union trade mark application is refused or if a registered European Union trade mark is cancelled, the European Union trade mark application or trade mark can be converted within a three-month period into a national trade mark application in any of the EU Member States other than those in which a third party has prior rights upon which the opposition or cancellation action was based. Such conversion preserves the filing or priority date of the prior European Union trade mark application.

Each of the EU Member State national trade mark offices examines the “converted” trade mark application based on its national legal standards.

REGISTRATION PROCEDURE OF A EUTM

- Formal conditions. Language question

A European Union trade mark application can be filed in any language of the EU. However, the applicant must also designate a second language chosen from the five official languages of the Office (English, French, German, Italian, and Spanish). During opposition, revocation or cancellation actions, a third party may choose this second language for procedural purposes. Alternatively, the parties may also agree to use another EU language for such proceedings.

The procedural language used in communications between the applicant and the Office is the language of the application if the latter is one of the five Office languages. Otherwise, the procedure is conducted in the second language chosen by the applicant.

For example, if an application is filed in English with French as second language, the ex parte procedure with the Office is held in English. However, a third party filing an opposition, a revocation or a cancellation action before the Office may decide to use French instead of English. In that case, the inter partes procedure at the Office is held entirely in French, and thus the applicant or trademark owner must use this second language.

Publication and registration are made in all the languages of the European Union, all necessary translations being made by the Office.

- Claim for priority

The Regulation defines a priority right of six months, similar to the priority right of the Paris Convention.

- Registrable signs

The EUTM Regulation stipulates that a sign be protected as a Community trademark as long as it :

  • can be represented graphically; and
  • distinguishes the goods and services of one undertaking from those of another.

Examples of such signs are words (including personal names), designs, letters, numerals, the shape of goods or their packaging.

- Examination procedure of EUTM applications

European Union Trade Mark applications may be refused on the basis of absolute grounds of refusal:

  • trademarks that are devoid of distinctive character;
  • trademarks consisting exclusively of signs or indications that serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the services, or other characteristics of the goods or services;
  • signs or indications that have become customary in trade;
  • three-dimensional shape marks that result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods;
  • trademarks that are contrary to public policy or principles of morality;
  • deceptive trademarks, in particular as to the nature, quality or geographical origin of the goods or services;
  • trademarks that include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention for the Protection of Industrial Property and that are of particular public interest, unless the necessary consents have been granted; and
  • geographical indications for wines or spirits that do not have such origin.

The EUTM application is rejected even if one of these grounds exists only in one EU Member State.

Evidence of prior use is not required when filing the application. However, a sign that would be refused protection for lack of distinctive character may become eligible for registration if the applicant can prove distinctiveness acquired through use. In this regard, the applicant must establish that the mark has been used throughout the whole or a substantial part of the EU, in such a way that a sufficiently large part of the relevant public would recognize the sign as a distinctive mark at the time the European Union trademark application is filed.

- Searching of prior trademarks

After examination for absolute grounds for refusal, the EUIPO establishes a search report, citing all prior identical and similar European Union trademarks. This report is then transmitted to the applicant as part of the European Union trademark registration procedure.

Further, as of March 10, 2008, the applicant may request establishment of national search reports. The following Member States issue national search reports: Austria, Bulgaria, Czech Republic, Denmark, Finland, Greece, Hungary, Ireland, Lithuania, Poland, Portugal, Romania, Slovak Republic, Spain, Sweden and the United Kingdom. It is not possible to selectively receive reports from only a few of these countries.

- Registration

Once the European Union trademark application is accepted for registration and the registration fee has been paid, the Community trademark is registered. The registration procedure generally takes about 18 months from the date of filing, if there are no objections or oppositions.

- Opposition procedure

No substantive examination exists by which the EUIPO identifies any prior rights that would conflict with the registration of the requested European Union trade mark. Prior rights may only be asserted by their owners in the context of an opposition procedure.

Upon publication of a European Union trademark application, a prior rightholder has three months to file an opposition. The opposition must be in writing and must cite the grounds on which it is based. However, a simplified formal opposition can be filed, and the opponent is given a deadline to complete its arguments and provide supporting documentation.

The opposition is transmitted to the applicant prior to any examination of its admissibility. Once the EUIPO deems the opposition admissible, the applicant and the opponent are notified of the start of a two-month ‘cooling-off’ period, during which the parties may attempt to negotiate a settlement. If jointly requested by the parties to the opposition procedure, the cooling-off period may be extended by the EUIPO up to 24 months. Either party may unilaterally opt out of the cooling-off period at any time by informing the EUIPO, in which case the adversarial part of the opposition immediately commences.

An opposition may be based on four principal relative grounds: .

(1) The first opposition ground is ownership of an identical or similar prior trademark registered for identical or similar goods or services (Articles 8(1)(a) and (b)). These include:

  • European Union trademark registrations or applications (subject to registration);
  • national trademark registrations or applications (subject to registration) in an EU Member State;
  • international trademark registrations that have effect in an EU member state; and
  • trademarks that are well known in a Member State in the sense of Article 6bis of the Paris Convention.

An opposition filed on the basis of Article 8(1)(b) must demonstrate that there is a likelihood of confusion between the two marks. Such likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, including:

  • the similarity between the signs;
  • the similarity between the goods and services;
  • the relevant territory;
  • prior coexistence of the two marks; and
  • the target consumer groups.

(2) The second opposition ground is the existence of an earlier trademark with reputation that may designate different goods or services (Article 8(5)) from the subsequent European Union trademark application.

In order for the opposition to succeed, the following conditions must be satisfied:

  • the marks in question are identical or similar;
  • the prior mark had a reputation in the European Union (in the case of a European Union trademark), or the territory in which it is protected (in the case of a national or international mark), as of the date of the contested European Union trademark application;
  • the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the prior trademark; and
  • the applicant is using the contested mark without due cause.

(3) The third opposition ground is ownership of a non-registered trademark or other sign used in the course of trade of more than mere local significance if, pursuant to the law of the member state governing the sign, it entitles its owner to prohibit the use of a subsequent trademark (Article 8(4)).

(4) The fourth opposition ground is based on a situation where a European Union trademark application has been filed by the agent or representative of a trademark owner without its consent (Article 8(3)).

The same opposition may be brought on the basis of one or more of these relative grounds, and may cite several prior rights – for example, several prior trademarks in the case of an opposition brought on the basis of Article 8(1)(a) – as long as the opponent owns or is the exclusive licensee all of these prior rights.

If the mark upon which the opposition is based has been registered for more than five years as of the contested European Union trademark application’s publication date, the applicant may request proof of the genuine use of the prior mark. Such request must be filed within the EUIPO deadline for the applicant’s response to the opposition. If no proof is submitted, or the EUIPO considers the proof inadequate, the opposition is automatically rejected.

The losing party in the opposition procedure must normally bear all the costs of the winning party within limits that are established by the Office. A different cost allotment may be imposed by the EUIPO according to equity.

In practice, opposition proceedings are often resolved by an amicable agreement between the parties. In this respect, according to EUIPO statistics, more than 75 % of the oppositions filed are settled amicably. Indeed, as oppositions may be based on prior rights in any of the EU Member states, each party often has prior rights in certain countries. Therefore, a coexistence agreement can be concluded such that both parties may register their marks as European Union trademarks for the specific goods or services in which they are interested.

If the registration of an application is refused, the applicant has a three-month window to opt to convert the European Union trademark application into national applications in any EU member state it wishes, other than those in which the opponent has prior rights. Such national applications benefit from the original filing date of the European Union trademark application.

In addition to the opposition procedure, any interested party is also able to submit written observations relating to any absolute ground for refusal during the procedure before the Office. However, relative grounds for refusal can only be raised during an opposition procedure.

- Appeal procedure

Either party may appeal the Opposition Division decision to the EUIPO Board of Appeal. Subsequently any questions of law can be appealed to the ECJ which has jurisdiction only to annul or alter the contested decision, but which cannot rule on the merits of a claim that the EUIPO has not already considered.

REVOCATION AND INVALIDITY OF THE EUROPEAN UNION TRADEMARK

After registration of the European Union trade mark, any third party may claim revocation or invalidity of the European Union trade mark directly at the EUIPO Invalidity Division, or indirectly as a defense in a counterclaim to infringement proceedings brought by a European Union trade mark owner before the Courts.

- Revocation of the European Union Trademark

The grounds for revocation are as follows:

1. If a European Union trademark is not genuinely used in the five years following registration, it may be cancelled for non-use.

The European Union Trademark Implementing Regulation provides further guidance as to how a trademark owner may fulfill the use requirement: the owner must provide proof of the place, time, nature and extent of the use of its mark. This evidence is normally confined to packaging, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and written statements. It is generally considered that a serious use in one major EU Member State is sufficient to avoid revocation for non-use of the EUTM.

A European Union trademark may be revoked only for those goods or services for which it is not used; it will be maintained for the rest.

2. If, in consequence of acts or inactivity of the owner, the trade mark has become the common name in the trade for a product or service in respect of which it is registered.

3. If, in consequence of the use made of, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of these goods or services.

- Invalidity of the European Union Trademark

The invalidity action may be based on one of the absolute grounds for refusal (particularly lack of distinctiveness).

In addition, said action may also be based on any of the relative grounds for refusal. In this case, the action must be filed by the owner of the prior right.

In addition, a cancellation action, which is much broader than an opposition, may also be based upon other prior rights such as a right to the name, a copyright or any other industrial property right.

Likewise, a European Union Trademark may be cancelled if the trademark owner acted in bad faith when it filed the European Union trademark application.

However, if the owner of an earlier European Union or national trade mark has tolerated the use of a later European Union trade mark for a period of five successive years, it loses the right to request invalidation on the basis of its prior trademark rights, unless the later mark was applied for in bad faith.

Therefore, it is necessary to carefully monitor the European Union trademarks filed by competitors in order to be able to file oppositions or cancellations actions.

RIGHTS CONFERRED BY THE EUTM

- Duration

A European Union trade mark grants protection for 10 years from the application’s filing date.

Registration may be renewed for subsequent ten-year periods. No evidence of actual use is requested for renewal.

The renewed European Union trade mark takes effect on the previous registration’s date of expiration .

A six-month extension for renewal can be obtained.

- Scope of protection

The European Union trade mark confers on its owner an exclusive right entitling him to prevent any unauthorized party from any commercial use without consent, of:

  • any sign which is identical in relation to goods or services that are identical;
  • any sign where there exists a likelihood of confusion, because of its identity or similarity with the European Union trade mark and the identity or similarity with the goods or services;
  • any sign which is identical or similar to the European Union trade mark in relation to goods or services which are not similar, where the latter has a reputation in the Community.

The exclusive right takes effect from the date of the publication the European Union trade mark’s registration. However, reasonable compensation can be obtained for matters arising after the application’s date of publication.

- Prior local rights

The owner of a prior merely local right (such as a trade name) is entitled within five years to ask the judge to forbid use of a European Union trade mark in his commercial area (a particular locality).

The ComEuropean Union munity trade mark owner continues to benefit of its registration outside the said commercial area, which is an exception to the principle of free circulation of goods within European Union.

Furthermore, the owner of a European Union trademark cannot oppose the prior local use.

EUTM INFRINGEMENT ACTIONS

The Brussels Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters, now replaced by Council Regulation 44/2001 applies to European Union trademark infringement proceedings.

Pursuant to the Brussels Convention, infringement actions must be brought before the following European Union trademark courts:

  • the court of the Member state in which the defendant is domiciled or has an establishment;
  • if the defendant is not domiciled and has no establishment in the European Union, the court of the Member state in which the plaintiff is domiciled or has an establishment;
  • if neither the defendant nor the plaintiff is domiciled or has an establishment in the European Union, the courts of the Member state in which the EUIPO has its seat (i.e., the Juzgados de lo Mercantil in Alicante, Spain); or
  • the courts of the member state in which the actual or threatened infringement took place.

However, in the latter case, the European Union trademark court will have limited jurisdiction over actual or threatened infringing acts within the territory of the Member State in which the court is situated.

Further, the EUTM Regulation provides that each EU Member State has to designate a number of its Courts as specialized in trade mark matters. These national Courts are then named "first instance” and “second instance” European Union trade mark Courts.

If during an infringement action, a counter claim on revocation or invalidity is brought before the same Court, the Court can simultaneously rule on both the infringement of the European Union trade mark and its validity. The decision is enforceable against all parties in the entire EU territory.

It should be noted that the counterclaim may also be brought before the European Union Intellectual Property Office. If this is done, the Court can stay the proceedings until the EUIPO issues its own decision. But a counterclaim will be inadmissible if the European Union Intellectual Property Office has already decided on the same legal matter between the same parties.

If such a counterclaim is submitted to the Court, the European Union trade mark owner can try blocking the counterclaim by requesting the Court to order the defendant to file a revocation or invalidity action before the Office within a prescribed time period. If the defendant fails to do so, the counterclaim is dismissed.

In the final decision, the Court will order an injunction if a European Union trade mark infringement has been recognized. The Court will also rule on damages and further sanctions by applying the law of the Member States in which the infringement took place.

The national law of the Member State in which the action is brought governs the infringement action for all matters not expressly covered by the European Union Trademark Regulation. Therefore, the question of damages, among other things, is governed by national law (all EU national laws are now harmonized in this regard).

Decisions of the national European Union trademark courts cannot be appealed to the ECJ although they may be appealed before the designated national European Union trademark courts of appeal. The ECJ has jurisdiction only in the case of prejudicial questions (i.e., questions referred by the European Union trademark court concerning the interpretation of a European Union Trademark Regulation provision).

Provisional measures are also available based on the national law of the Member State in which the action is lodged. A request for provisional measures, including protective measures, may be made to a court of any Member State. If the court ordering the provisional measures is the same European Union trademark court with jurisdiction over the infringement action, it may order provisional measures in the territory of any EU Member State. If not, the provisional measures will be limited to the territory of the Member State of the court issuing the order.

- Simultaneous and successive civil actions

The first court applied to is the competent court with respect to the claimed European Union trade mark infringement as long as the contested marks are identical and cover identical products or services. This means that any action brought before the second court must be dismissed. If the marks are only similar, the second court may stay the proceedings while waiting for first court’s ruling.

TRANSFER AND LICENSES OF EUTM

The transfer or assignment of a European Union trade mark can only be made for the entire European Union.

The assignment of a European Union trademark must be evidenced by a written document signed by the parties. However, the documents do not have to be legalized. A simple request signed by both parties is sufficient to record the assignment with the EUIPO. All transfers of ownership should be carefully recorded, since the new owner may not invoke any rights to the European Union trade mark until the assignment’s official recording.

European Union trade mark licenses (exclusive or non exclusive) can be granted for all or only part of the products or services and for all or only part of the EU. No quality control is required in the license agreement.

Licences may also be recorded in the European Union Trademark Register. Such recordal is a condition for the licensee to assert any European Union trade mark rights against third parties. No proof of the license is required if the request is filed or co-signed by the European Union trademark owner. However, if it is filed or signed exclusively by the licensee, proof of the license or the European Union trademark owner’s consent must be shown.