The European Trademark

Studio Turini Experience in the Registration Process of a European Trademark

The European trademark is an important right for those operating in the European territory and is willing to distinguish itself, or to distinguish its goods and services from those of the competition.

Considering that it grants protection in all the member states of the European Union, it has a moderate price and has many benefits. This type of trademark can stop forgeries in the European Union.

It is therefore a strategic trademark for those growing their activities in the Union. It is also widely used to set strategies of defense or of local distribution of goods. The person filing a European trademark has 6 months to extend it abroad, hooking to the filing date of the European trademark (the so-called priority right).

A European trademark is Forever

The registration of a European trademark means its owner has the exclusive right to use that sign on the entire European territory for 10 years.

At the expiration of the ten years, it can be renewed for 10 additional years and so on. In case it is not used for 5 years from the day of registration, the trademark decays. The cancellation is not automatic, it has to be stated by a judge or by the Office after a specific request submitted by someone interested in canceling the trademark.

What is the European Trademark?

The European trademark, originally called community, created with Regulation no. 40/94 by the EC Council, allows one to obtain a trademark valid in the entire European territory with a single application. The European trademark is a unique right: it can be registered, transferred, withdrawn, declared invalid or canceled and its use can be forbidden in the EU in its totality and not for the single members.

Who can register a European trademark?

The people able to apply for a European Trademark are:

  • Natural people having citizenship or domicile in one of the member states;
  • Legal people having their office or a stable organization in one of the member states;
  • Natural and legal people having citizenship, domicile, office or stable organization in one of the countries adhering to the Paris Convention or the General Agreement on Tariffs and Trade

This registration system coexists with the national and international trademark registration system, according to the Madrid Protocol.

Before filing a trademark, one should choose:

  1. How to file it: verbal or graphic.     
  2. For which classes.     

It is also important to conduct a novelty search to be sure that the chosen trademark has not been already registered by someone else.

When the preliminary analysis has been carefully made, as we suggest, with the support of an expert, it is possible to proceed with the filing of the application for registration.

How to file a European Trademark Application

The European trademark application can be submitted to the European Union Intellectual Property Office (EUIPO) in Alicante (Spain). To file the application for registration one needs to fill in a specific form where shall be indicated:

  1. the applicant’s data, who will become the owner of the trademark.     
  2. the data of the trademark.     
  3. the classes of goods or services for which protection is sought.

1/ The ownership of the trademark: the applicant

During the preliminary analysis we advise paying particular attention also to the choice of the ownership. Is it a natural or legal person? The ownership of the trademark – and the consequent indication of the applicant – are choices with financial and strategic consequences.

2/ The registration procedure at a bureaucratic level

A sample – in colors or in black and white according to the choice – of the trademark shall be attached. When filing a collective trademark, one should also provide a copy of the regulation to use it.

Finally, the payment of a variable amount of taxes depending on the type of trademark and the number of the classes is required.

3/ The strategic importance of the right selection of the classes

The choice of the classes should be done with extreme care consulting the Nice classification. On the basis of the most recent guidelines of the Office, it is no longer possible to merely indicate the number of the class but it is also required to list the goods and services of interest.

It is time to trust an Expert

The filling and the sending of a European trademark application for registration may seem rather easy. Nevertheless, it is important to remember that the difficulty, often high, lies precisely in the preliminary choices that have to be made before the filing.
The extension to the entire European Union of the validity of this trademark entails the necessity to pay more care to the choice of the sign. If the trademark existed in even just one of the member states, this would determine the rejection of the application. For this reason, in this phase, it is very important to consult an expert and not proceed autonomously.

The Registration Procedure

Once the application for registration has been filed, the Office issues a number of application and a filing date which marks the beginning of the examination of the documentation.

The Office conducts a first formal and technical exam to check the formal correctness of the application and the absence of the so-called absolute grounds for refusal of registration. For instance, a trademark contrary to public policy can be rejected by the Office as well as an offensive trademark.

The publication of the application and possible oppositions

When the trademark passes the first exam of the Office, the application is published. From the publication starts a period of 3 months during which, whoever may feel offended by that trademark application – because they think that that trademark is similar to their earlier trademark, or because that trademark impinges on their right – may submit an Opposition to the registration before the EUIPO.

With the presentation of an opposition starts an administrative proceeding during which the trademark applicant has the opportunity to defend themself against the opponent. At the end of the opposition the Office will issue a judgment that could cause the granting or the rejection of the trademark.

If the European trademark application was not accepted for obstacles existing only in some countries of the Union, the application can, under certain circumstances, be converted into a national application in the countries where this obstacle does not exist.

Publication, Registration, Duration and Renewal of the European Trademark

At the positive ending of the potential opposition, or at the end of the three-month period, the trademark is published and then registered for the classes indicated in the application.

This trademark gives its owner the exclusive right to use that sign in the entire European territory for 10 years. At the expiration, it is possible to ask for the renewal for 10 additional years. The trademark has to be actually used, in case it is not used for 5 years from the registration, it decays.

Oppositions

The owner of earlier trademarks or rights can oppose the registration of a trademark within 3 months from the publication of the application. It is important to remember that as earlier rights are considered also the national and international trademarks designating the European Union and/or a member state and not only as an earlier European trademark.

To submit an opposition, it is necessary to fill in a specific form, attach a copy of the earlier trademarks or proofs of the earlier rights and explain the reason for the appeal. At the filing of the opposition, it is also requested the payment of the opposition fee.

Upon receipt of the reception of the opposition and after having verified its admissibility, the EUIPO informs the owner and gives the parties a deadline to submit the proofs and the arguments supporting their motivations. Then it issues its decision.During this phase being assisted by an expert is vital because the deeds that will be presented have to contain legal argumentation which are often very complex.

Appeals to the Office’s decision

Within 2 months, one could address the Board of Appeals to appeal against the measures of the Office rejecting, totally or partially, a filed application. The appeal shall be properly motivated in form or in fact. Against the decision of the Board of Appeals, it is possible to appeal to the Court of first instance and then at the Court of Justice. Given the nature and the difficulty of the proceeding, it is required to be represented by a lawyer expert in the field.

Withdraw and limitation of an application

The applicant has the chance at any moment – between the filing of the application and its granting grant – to withdraw the application (and therefore to renounce it) or to limit it      in case it is necessary to reduce the number or classes initially chosen. Moreover, it could be necessary to withdraw or limit a trademark when a conflict arises with a third having earlier rights.

The only modifications to a trademark are granted on limited occasions and without altering or enlarging its substantial protection. A change not only consented but also due is related to the change of address of the owner of the trademark.

Personal detail changes, renounces and limitations have to be communicated to the office submitting a specific application of change.

Trademark Transfer

After the registration, a trademark can be just used or also transferred or licensed to thirds. The mechanism of transfer of a European trademark is similar to a transaction: in exchange for a payment, the trademark changes “owner”. In case of a license, exactly as a rent, the owner grants its use to thirds.

Transferring or buying a trademark: the technical analysis and the attribution of a value

Contracts of trademark transfer are very delicate: they require a wide knowledge of the trademark that is being sold and, above all, purchased. Therefore, it requires a technical study aimed at checking that: 

  • the trademark is alive;
  • the absence of potential or current conflicts;
  • the absence of coexistent agreements or similar.

All this is attained through a careful analysis of the trademark, without which one could risk buying an empty box.

Deciding the value of the trademark is another relevant aspect: a daunting task without the help of an expert. The transfer or license of a trademark has to be reported to the EUIPO by a specific transfer application. The transfer is necessary for the effect to thirds and above all as a guarantee for the purchaser or licensee.

Norm of reference

EU Regulation 2015/2424 in force from March 23, 2016

Giulia Mugnaini - responsabile Marchi&Design

Get in touch with our expert

Dott.ssa Giulia Mugnaini

Head of Trademark & Design Department

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