Legal Basis

(A)  Basic Legal Texts

– Regulation (EU) 2017/1001 of The European Parliament and of the Council of June 14, 2017 on the European Union trade mark (codification).
– Commission Delegated Regulation (EU) 2018/625 of March 5, 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430.
– Commission Implementing Regulation (EU) 2018/626 of March 5, 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431.
– Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the Member States relating to trade marks. The Directive replaces the content of Directive 2008/95/EC of the European Parliament and of the Council of October 22, 2008, which had in turn replaced the content of Directive 89/104/EEC of December 21, 1988, as amended by a 1992 Council Decision, without any substantive change.

The new Directive (EU) 2015/2436 stipulates that Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with Articles 3 to 6, Articles 8 to 14, Articles 16, 17 and 18, Articles 22 to 39, Article 41, Articles 43 to 50 by January 14, 2019. Member States shall bring into force the laws, regulations and administrative provisions to comply with Article 45 by January 14, 2023.

Further information available on the Internet site of the EUIPO at: Law & Practice, EU trade mark legal texts, Regulations & Directives:
https://euipo.europa.eu/ohimportal/en/eu-trade-mark-legal-texts

(B)  Decisions and Communications

Further information available at: Law & Practice, Law, Decisions & Communications of the Executive Director:
https://euipo.europa.eu/ohimportal/en/decisions-and-communications-of-the-executive-director

(C)  Guidelines on Procedures before the EUIPO

Information on guidelines available at:
https://euipo.europa.eu/ohimportal/en/trade-mark-guidelines

(D)  Manuals on Procedures before the EUIPO

Information on manuals and current trademark practice also available at: Law & Practice of the EUIPO portal.

See information about the EUIPO “Convergence Programme”, launched in 2011, an endeavor to reach common ground in areas where IP Offices have different practices. This programme currently involves various projects regarding: harmonization of trademark classification practice of goods and services; convergence of class headings; absolute grounds for refusal for figurative trademarks with purely descriptive words or expressions; scope of protection of trademarks exclusively in black, white and/or shades of grey; relative grounds – likelihood of confusion (impact of non-distinctive/weak components); convergence on graphic representations of designs; and harmonization of product indications.

 

Application and Prosecution

Office: The EUTM application is examined and registered by the European Union Intellectual Property Office (EUIPO).

Applicant: EUTMs may be obtained by natural or legal persons, including authorities established under public law.

Filing requirements: an application for an EUTM may cover more than one international class and must contain:
1. A request;
2. Information identifying the applicant;
3. A list of goods or services;
4. A representation of the trademark.

The application will be subject to payment of a filing fee consisting of a basic fee, with a further fee for each additional class.

The official languages of the EUIPO are: English, French, German, Italian and Spanish. All proceedings at the EUIPO will therefore be conducted in one of those languages. The following exceptions, among others, are nevertheless accepted: (a) an application for an EUTM may be filed in one of the official languages of the EU; (b) parties to proceedings may agree to use an official language of the EU other than one of the official languages of the EUIPO; (c) when the applicant for an EUTM is the sole party to proceedings and the application was filed in an official language of the EU other than one of the official languages of the EUIPO, the application may be prosecuted in that language.

Electronic filing: possible.

Electronic signatures: are accepted.

The registration procedure for an EUTM is characterized by the following stages:

(a) Formal examination. The EUIPO examines the application to see if it meets the requirements for the accordance of a filing date; if it complies with the conditions laid down in the Implementing Regulation; if the appropriate fees have been paid;

(b) Examination as to absolute grounds for refusal. The EUIPO checks ex officio to see that the application does not come under any absolute ground for refusal;

(c) Search. The EUIPO undertakes a search for potentially relevant earlier EUTMs or EUTM applications which could be invoked against the EUTM applied for and, if so requested by the applicant, sends the latter a report citing the trademarks found. The Office in any event also notifies the owners of those earlier marks of the existence of the mark of the applicant, for their information. If expressly requested in the EUTM application, the EU search report may be supplemented by reports from the central Industrial Property Offices of the Member States of the EU, citing any earlier national trademarks or trademark applications which may be invoked against the EUTM applied for;

(d) Publication of the application, observations by third parties and oppositions. The application is published in the EU Trade Marks Bulletin, mainly so that observations may be submitted or oppositions may be entered. Third parties may submit written observations to the EUIPO, explaining the grounds on which the EUTM application should be refused ex officio, in particular on coming under an absolute ground for refusal. Within a period of three months following publication of the EUTM, oppositions may be entered by the proprietors of earlier marks or rights, as established in Art. 8 EUTMR (see infra IV);

(e) Registration. Once the trademark is granted, it is registered as an EU trademark. The Office issues a certificate of registration, which can be issued by electronic means. When it is not issued by electronic means, the Office provides certified or uncertified copies of the certificate subject to the payment of a fee;

(f) Appeals. Decisions of the EUIPO can be appealed to the Board of Appeal of the EUIPO. The appeal must be filed in writing within two months after the notification of the decision. The appeal is deemed to have been filed only when the corresponding fee has been paid. In addition, a written statement setting out the grounds of appeal must be filed within four months after the date of notification of the decision. Remedy from decisions by the Boards of Appeal may be sought from the General Court of Justice within two months, after which a further appeal to the European Court of Justice is possible.

 

Grounds for Refusal

An EUTM may be refused if it comes under an absolute ground or a relative ground for refusal.

The absolute grounds for refusal will be examined ex officio by the EUIPO and they are as follows:

(a) Signs of which a trademark may not consist pursuant to Art. 4 EUTMR, i.e.: signs which are not capable of distinguishing the goods or services of one undertaking from those of another undertaking;

(b) Signs which are devoid of any distinctive character;

(c) Signs which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d) Signs or indications which have become customary in the current language or in bona fide and established practices of the trade;

(e) Signs which consist exclusively of (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods;

(f) Trademarks which are contrary to public policy or to accepted principles of morality;

(g) Trademarks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

(h) Trademarks which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property;

(i) Trademarks which include badges, emblems, or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given;

(j) Trademarks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications;

(k) Trademarks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;

(l) Trademarks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialties guaranteed;

(m) Trademarks which consist of, or reproduce in their essential elements, an earlier plan variety denomination registered in accordance with Union legislation or national law, or international agreements to which the Union or the Member State concerned is a party, providing for protection of plant variety rights, and which are in respect of plan varieties of the same or closely related species.

The relative grounds for refusal will only be examined by the EUIPO if there is a third party opposition. Through the application of these grounds, EUTMs are not registered if they are identical with or similar to earlier trademarks, covering identical or similar goods or services (although the goods or services need not be identical or similar if the earlier trademark is reputed). Earlier trademarks means: (a) EUTMs and EUTM applications, national trademarks of a Member State of the EU (including those registered at the Benelux Trade Mark Office) and international trademarks having effect in a Member State of the EU and in the EU itself; (b) trademarks which are well-known in a Member State of the EU, in the sense of Art. 6bis PUC. There will also be a relative ground for refusal when the EUTM comes under Art. 6septies PUC (mark applied for by an agent or representative) or when there is another sign used in the course of trade of more than mere local significance; (c) designations of origin or geographical indications.

At the request of the applicant, the proprietor of the opposing trademark must submit proof of use of the mark on which he bases the opposition (see third paragraph of section VI). In the absence of such proof, the opposition will be rejected.

 

Duration and Renewal

An EUTM is registered for a period of ten years from the filing date of the application and may be renewed for further periods of ten years.

The request for renewal must be submitted within a period of six months, counted from the expiry date of the EUTM. Provision is nevertheless made for further period of six months, subject to payment of a surcharge in addition to the normal renewal fee.

 

Provisions relating to the Use of the EUTM

Article 18 EUTMR provides that an EUTM is to be put to genuine use in the European Union by its proprietor in connection with the goods or services in respect of which it has been registered. If no such use is made within a period of five years following registration, or if use is suspended for an uninterrupted period of five years, the EUTM shall be subject to certain sanctions unless there are proper reasons for non-use.

Use of an EUTM with the consent of the proprietor shall be deemed to constitute use by the proprietor. The following shall also constitute use: (a) use of the EUTM in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trademark in the form as used is also registered in the name of the proprietor; (b) affixing of the EUTM to goods or to the packaging thereof in the EU solely for export purposes.

Non-compliance with the requirements for use referred to above shall be grounds for revocation of the EUTM (Art. 58.1(a) EUTMR). Revocation may be requested on application to the EUIPO or on the basis of a counterclaim in infringement proceedings. Nevertheless, no person may claim that the proprietor’s rights in an EUTM should be revoked where, during the interval between expiry of the five-year period and the filing of the application or counterclaim, genuine use of the trademark has been started or resumed. The commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed.

Non-use of an EUTM may also have adverse effects in opposition and invalidity proceedings. Pursuant to the provisions of Art. 47.2 EUTMR, if the applicant so requests, the proprietor of an earlier EUTM who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of filing or of priority of the EUTM application, the earlier EUTM has been put to genuine use or that there are proper reasons for non-use. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EUTM has been used only in relation to part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the case of invalidity proceedings, Art. 64.2 EUTMR establishes that if the proprietor of the EUTM so requests, the proprietor of an earlier EUTM, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier EUTM has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which the proprietor of that earlier trademark cites as justification for his application, or that there are proper reasons for non-use, provided the earlier EUTM has at that date been registered for not less than five years. If, at the date on which the EUTM application was filed or at the priority date of the EUTM application, the earlier EUTM had been registered for not less than five years, the proprietor of the earlier EUTM shall furnish proof that, in addition, the conditions set out in Article 47(2) were satisfied at that date. In the absence of proof to this effect, the application for a declaration of invalidity shall be rejected. If the earlier EUTM has been used only in relation to part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect of that part of the goods or services only.

The provisions relating to proof of use of the earlier trademarks in opposition and invalidity proceedings against EUTMs shall also apply to earlier national trademarks on which the proceedings may be based. In such cases, the proprietor of the earlier national registration who has filed opposition or made application for a declaration of invalidity shall, at the request of the proprietor of the later EUTM application or registration, furnish proof of use of his national trademark in the framework of the said opposition or invalidity proceedings.

 

Content of the EUTM Right

An EUTM confers on its proprietor an exclusive right entitling him to prevent the use by any third party, without his consent, of any identical or similar sign for identical or similar goods. The proprietor of a reputed EUTM may prohibit the use of an identical or similar sign for different goods or services when use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EUTM.

The right conferred on the proprietor of an EUTM entitles him, in particular, to prohibit a third party from: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods, putting them on the market or stocking them for these purposes or offering or supplying services under the sign; (c) importing or exporting the goods under the sign; (d) using the sign as a trade or company name or as part of a trade or company name; (e) using the sign on business papers and in advertising; (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/CE.

Notwithstanding the foregoing, the right conferred by a Community trademark will not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address, when the third party is a natural person; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service or other characteristics thereof; (c) the trademark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. These limitations apply provided that the use thus made by the third party is in accordance with honest practices in industrial or commercial matters.

Furthermore, the right conferred by an EUTM does not entitle the proprietor to prohibit its use on goods which have been put on the market in the European Economic Area under that trademark by the proprietor or with his consent.

An EUTM may be transferred, separately from any transfer of the undertaking, for all or for some of the goods or services for which it is registered. It may also be given as security or be the subject of rights in rem or may be levied in execution.

An EUTM may be licensed for all or some of the goods or services and for the whole or part of the territory of the EU. Licenses may be exclusive or non-exclusive.

 

Extinguishment of the EUTM Right

The right in an EUTM may be extinguished through surrender by its proprietor. The surrender must be declared to the EUIPO in writing and will only have effect once it is entered on the Register. If any right affecting the mark (a right in rem, for example) is on the Register, the surrender may only be entered with the agreement of the holder of that right. Finally, if a license had been registered, the proprietor of the trademark will have to prove that he has informed the licensee of his intention to surrender the EUTM.

Grounds for revocation, which implies extinguishment of the right in the EUTM, are as follows: (a) if, within a continuous period of five years, the trademark has not been put to genuine use in the EU, in connection with the goods or services for which it is registered, and there are no proper reasons for non-use. However, no person may claim that the proprietor’s rights in an EU trademark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trademark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed; (b) if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered; (c) if, in consequence of the use made of it by the proprietor the trademark becomes a misleading indication.

An EUTM may be invalidated on coming under an absolute ground or a relative ground for invalidity. There are absolute grounds for invalidity when the EU trademark has been registered in breach of Art. 7 EUTMR (absolute grounds for refusal) or when the applicant acted in bad faith when he filed the EUTM application. There are relative grounds for invalidity when the EUTM has been registered in breach of Art. 8 EUTMR (relative grounds for refusal) or when there is an earlier right (a right to a name, a right of personal portrayal, a copyright, an industrial property right), or an earlier designation of origin or geographical indication.

The invalidity or revocation of an EUTM will be declared on application to the EUIPO or on the basis of a counterclaim in infringement proceedings. If the grounds for invalidity or revocation only exist in relation to some of the goods or services, the rights in the trademark will be declared invalid or revoked in respect of those goods or services only.

 

Defense of the EUTM in the Courts

The CTMR created the “Community Trade Mark Courts”, now called the “EU Trade Mark Courts”. The Member States of the EU are thus obliged to designate in their territories a number as limited as possible of national courts and tribunals of first and second instance to act as “EU Trade Mark Courts” (Art. 123 EUTMR). These Courts have jurisdiction for the following matters: (a) actions for infringement of an EUTM; (b) actions for declaration of non-infringement, if they are permitted under national law; (c) actions claiming compensation for infringement of a published EUTM application; (d) counterclaims for revocation or invalidity of an EUTM.

Territorial jurisdiction corresponds, in order of preference: to the Courts of the Member State of the EU in which the defendant is domiciled or has his establishment; or to the Courts of the Member State in which the plaintiff is domiciled or has his establishment, if the defendant is neither domiciled nor has an establishment in the EU; or to the Courts of the Member State where the EUIPO has its seat (to the Spanish Courts, therefore) if neither the defendant nor the plaintiff is domiciled or has an establishment in the EU.

 

Connections between the EUTM and National Trademarks

An EUTM does not replace national trademarks. It is possible to continue applying for registration of the latter at the corresponding central Industrial Property Offices of the Member States of the EU. Under these circumstances, an EUTM or EUTM application may be invoked against an application for a national trademark (Art. 4.2 of the Council Directive of the European Union, to approximate the laws of the Member States relating to trademarks).

The applicant for an EUTM may claim the seniority of an earlier trademark registered in his name in a Member State (including Benelux and international trademarks). Seniority has the effect that, where the proprietor of the EUTM surrenders the earlier trademark or allows it to lapse, he is deemed to continue to enjoy the same rights (for the Member State in question) as he would have had if the earlier national trademark were still registered.

The applicant for or proprietor of an EUTM may request the conversion thereof into a national trademark application or registration if the EUTM application is refused, withdrawn or deemed to be withdrawn, or if the EUTM ceases to have effect. However, conversion will not take place when the EUTM has been revoked for non-use (unless conversion is requested precisely in a Member State where the EUTM has been put to use) or when the trademark is affected by a ground for refusal, revocation or invalidity in the Member State where conversion is requested.

The request for conversion must be filed at the EUIPO (Art. 139 EUTMR), which checks to see if it meets the required conditions. Once the request is transmitted to the central Industrial Property Office of the Member State where conversion is sought, the latter in turn may request: (a) payment of a national application fee; (b) a translation of the application and accompanying documents into the official language of the country; (c) indication of an address for service; (d) a representation of the trademark in the number of copies specified by the State in question.

 

Extension of the Effects of EUTMs to the New Member States on Enlargement of the European Union

The following basic principles have governed the extensions to Cyprus, the Czech Republic, and others from May 1, 2004, to Bulgaria and Romania from January 1, 2007, and to Croatia from July 1, 2013 of EUTMs filed and/or registered before that date as regards possible conflicts with national trademarks in the new Member States.

(A)  Upon enlargement, all previously registered EUTMs are extended to the new Member States automatically, without administrative action of any kind and without payment of fees.

(B)  Earlier national trademarks in the new Member States do not provide a basis for invalidity of an EUTM registered before enlargement. The holder of an earlier national right will only be entitled to oppose use of an EUTM automatically extended to his or her country, provided that the earlier national mark is incontestable and was not applied for in bad faith.

(C)  EUTMs applied for but still pending registration at the time of enlargement will also be automatically extended to the new Member States. The holder of an earlier national right in those countries is only entitled to oppose EUTM applications filed from November 1, 2003 (for the 2004 enlargement), from July 1, 2006 (for the 2007 enlargement), and from January 1, 2013 (for the 2013 enlargement), again provided that the said national right holder has not acted in bad faith.

 

Link between the EUTM and the Madrid Protocol

The European Union’s accession to the Madrid Protocol took effect on October 1, 2004.

Consequently, starting on that date, it became possible to apply for and obtain international registrations based on an EUTM application or registration and also to file international registrations designating the European Union as a unit.

Title XIII EUTMR consists of three sections respectively laying down certain general provisions (Art. 182), provisions for international registrations based on an EUTM application or registration (Arts. 183 to 188), and provisions for international registrations that designate the European Union (Arts. 189 to 202).

(A)  The following are the main points regulating international registrations based on EU trademarks (referred to as “international applications” in Article 182 EUTMR): (1) only nationals of the Member States of the European Union or parties having their legal domicile or an establishment in one of the Member States, may file application for an international trademark registration based on an EUTM application or registration; (2) the application is to be filed at the EUIPO, which shall be responsible for forwarding the application to WIPO; (3) a fee is to be paid to the EUIPO, while the International Bureau’s fees are payable directly to WIPO (Art. 188 EUTMR); (4) if the international application is based on an EUTM application, prosecution may be deferred until registration of the EUTM, in which case the international application will be deemed to have been received on the date of registration of the EUTM (Art. 183.2 EUTMR); (5) the international application may be filed in any of the official languages of the European Union (Art. 184.1 EUTMR), but if the language used is not one of the languages allowed under the Protocol (i.e., it is a language other than English, French, or Spanish), the application shall designate one of these last three languages as a second language to be used by the EUIPO when forwarding the international application to WIPO (Art. 184.2 EUTMR);

(B)  The main considerations relating to the regulation of international registrations that designate the European Union are: (1) the international registrations are to be published in the EU Trade Marks Bulletin; (2) the international registrations will undergo examination as to absolute grounds for refusal (Art. 194 EUTMR), an EU search report as per Art. 43 EUTMR will be drawn up for them (Art. 195 EUTMR), and these registrations will be subject to opposition proceedings just like EU trademark applications filed directly with the EUIPO; (3) where the examination as to absolute grounds for refusal results in a provisional refusal within the meaning of the Protocol, notification is to be sent to the International Bureau within eighteen months of the date on which WIPO sent the EUIPO notice of the international registration or of the territorial extension (Art. 5.2 (a) and (b) in the Protocol); (4) designation of the European Union for an international registration will require payment of an individual fee (within the meaning of Art. 8.7(a) of the Protocol; (5) there will be a three-month term for lodging oppositions against international registrations that designate the European Union, beginning one month after publication of the international registration in the EU Trade Marks Bulletin; (6) where no objections are raised against the international registration or the objections are overcome, the EUIPO will publish notice of the grant of protection; (7) where the international registration is refused protection, the owner may choose between conversion into one or more national applications in accordance with Arts. 139, 140 and 141 EUTMR or one or more country designations for the international registration (Art. 202 EUTMR).

 

Domain Names

For the protection of domain names under the top-level domain name “.eu”, see separate section “European Union Domain Names“.

 

Office

European Union Intellectual Property Office (EUIPO), Avenida de Europa 4, 03008 Alicante, Spain, tel (+34-96) 513 9100, e-mail: customercare@euipo.europa.eu ; Internet address: https://euipo.europa.eu/ohimportal/en

Online trademark search: www.euipo.europa.eu/en/trade-marks/before-applying/availability

Official trademark fees: www.euipo.europa.eu/en/trade-marks/before-applying/fees-payments