Introduction to European Trade Marks

What is a European Union trade mark?

A European Union Trade Mark (EUTM) provides trade mark protection in all 28 member states of the European Union through one registration, namely: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the UK.

The following types of marks may be registered as EUTMs:

• Word marks or combinations of words, letters and/or numerals.
• Figurative marks: logos, symbols, and designs etc.
• Colours or combinations of colours.
• Three-dimensional marks.
• Sound marks.

It is not possible to register a series of marks as an EUTM; separate EUTM applications would need to be filed if protection is needed for multiple versions of the same trade mark.

An EUTM is a unitary right valid for the whole European Union. It is not possible to limit a EUTM to only certain countries; similarly it is not possible to assign a EUTM for certain member states. If insurmountable objections are raised against the registration of a EUTM which are only relevant to certain member states, this will result in the application being refused protection as a EUTM. It may still be possible to register the trade mark as a national trade mark registration in the countries where the obstacle does not exist, including by converting the EUTM into national applications in those countries.

An EUTM registration is registered for 10 years and may be renewed for further 10 year periods indefinitely. EUTM registrations are automatically extended to countries joining the European Union without further payment or formalities needed.

An EUTM confers on its owner the right to prevent third parties from using the same or similar trade mark in the course of trade without authorisation in relation to the same or similar goods and/or services. In some instances, a trade mark owner may be able to stop another party from using the same or similar mark on unrelated goods and/or services if their mark enjoys a significant reputation.

Prior to the filing of any new EUTM and certainly before putting the proposed trade mark into use, trade mark availability searches are recommended to detect any registered trade mark infringement risk as well as potential obstacles to trade mark registration. To file an EUTM application we would need the following:

• Name and address of the intended trade mark owner.
• Details of the trade mark to be filed.
• A representation of the trade mark if it is a figurative mark in black and white or in colour depending on how the mark is to be filed, preferably in .jpeg format.
• A list of the goods and /or services for which trade mark is to be registered.
• Details of any earlier foreign rights for the same mark from which priority or seniority may be claimed.

Your trade mark must be put to use in the European Union in relation to the goods and /or services for which protection has been obtained to prevent your EUTM registration being susceptible to revocation for non-use. An EUTM registration may be revoked if the trade mark the subject of the registration is not used in any five year period following its registration. If you are uncertain whether the use made of the mark or proposed to be made would be sufficient to rebut any potential revocation proceedings instigated by your competitors or other third parties, our attorneys would be happy to provide assistance.

We have extensive experience in prosecuting EUTM applications and managing our client’s EUTM interests generally. We regularly assist our clients in choosing trade marks which are available for use as well as for trade mark registration as a EUTM.

Our pre-application services include:

• Trade mark availability searches.
• Company name and domain name enquiries.
• Arranging investigations into use of third party trade marks for possible vulnerability of registrations on non-use grounds.
• Negotiations with earlier trade mark owners with a view to addressing obstacles posed by their trade mark rights.

In securing and maintaining registration our services include:

• Analysis of goods and services offered for correct classification on the Trade Mark Register.
• Drafting of specifications of goods and services.
• Advice upon appropriate presentation of trade marks for registration.
• Advice upon official objections raised and preparation of responses thereto, including written submissions before the European Union Intellectual Property Office.
• Representation of clients in opposition proceedings.
• Negotiation of co-existence agreements.
• Coordination of future renewals of trade mark registrations.
• Protection of trade marks beyond the European Union.
• Assistance in licensing or assignment of trade mark rights.
• Enforcement of Intellectual Property Rights.
• Setting up watch services to avoid dilution of registered rights.