Registration protects the trademark in the entire territory of the European Union: Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden (for a total of 4,326,000 square kilometers and 446 million inhabitants).
All signs (words, devices, digits, shapes) are registrable as trademarks upon condition that they are represented in the register in such a way as to allow the competent authorities and the public to determine the object of the protection clearly and precisely, and that they fulfil the requirements of novelty, distinctiveness and lawfulness.
Types of Marks
The types of registrable marks are product marks, service marks, collective marks, certification marks, shape marks (three-dimensional), word marks, figurative marks, complex marks (including figurative and word elements), position marks, pattern marks, colour marks (a single colour or a combination of colours), sound marks, movement marks, multimedia marks, holographic marks.
In accordance with the Paris Convention, it is possible to claim the priority of an earlier national filing within 6 months. A first application for a European Union trademark can be the basis of a priority claim when subsequent applications are filed for the same trademark in other states party to the Paris Convention.
Who May Apply for a European Union Trademark
Any natural or legal person, including any authority established under public law, may be the proprietor of a European Union trademark.
Applications to register collective trademarks of the European union may be filed by legal persons under public law and by associations of manufacturers, producers, service providers or traders that are eligible, according to the applicable law, to have rights and obligations of any nature, to enter into agreements or perform other legal acts and to be a party in legal proceedings.
Applications to register certification trademarks of the European union may be filed by natural or legal persons, including institutions, authorities and bodies under public law, upon condition that they are not suppliers of the products or services of the certified type.
Applicants may only be represented professionally by qualified trademark attorneys enrolled in a special list held by the European Union Intellectual Property Office (EUIPO), or by attorneys-at-law.
Where to File the Application
Applications can be filed with the EUIPO based in Alicante (Spain).
The Trademark Application
The application for registration of a European Union trademark can be filed regardless of whether a prior national trademark exists.
Effects of the Application
A European Union trademark enjoys full protection only after publication of the registration. Before registration, and as from the publication of the application, the trademark of the European Union enjoys limited protection which enables the applicant to bring proceedings for counterfeiting and to request reasonable compensation, although decisions in such actions can be issued only after the registration of the trademark.
It is possible to claim seniority of one or more national prior registrations obtained in member states of the European Union, either at the time the application is filed, or within 2 months of filing, or after registration.
The official languages to be used before the EUIPO are French, English, Italian, Spanish and German.
The EUIPO carries out an examination of distinctiveness, lawfulness and lack of deceptiveness.
Publication of the Application
Applications are published in the European Union Trademark Bulletin after the searches have been completed.
Within 3 months of the publication of the European Union trademark application, third parties who own rights to a prior identical or similar trademark may, under certain conditions, file an opposition against the trademark’s registration.
In the case of an international registration designating the European Union, the term is 4 months running from the re-publication of the registration in the European Union trademark bulletin.
If the application is not opposed by third parties or denied, or if opposition is rejected, the European Union trademark registration is granted.
Rights Conferred by the European Union Trademark Registration
The registration of a European Union trademark gives the owner the right to exclusive use of the trademark in the entire European Union territory.
The international classification of goods and services (the Nice Agreement) applies. Applications may include more than one class of goods and/or services. Products and services for which protection is sought must be identified by the applicant with the clarity and precision sufficient to allow the competent authorities and economic operators to determine, exclusively on such a base, the scope of the protection sought.
Duration and Renewals
A European Union trademark registration has a duration of 10 years running from the filing date. An indefinite number of renewals is possible for subsequent 10-year periods.
Use of a Registered European Union Trademark
Lack of use of a registered trademark in the European Union continued for 5 years following its registration can cause the registration to lapse.
The owner of a prior trademark who has knowingly tolerated the use of a later registered trademark of the European Union for a period of 5 or more consecutive years can no longer request that the later trademark be declared invalid or oppose its use.
Assignment of a European Union trademark is permitted only for the entire territory of the European Union. However, the trademark may be assigned for only part of the goods and/or services.
Licensing is permitted for all or part of the European Union’s territory and for all or part of the goods and/or services.
The use of symbols indicating that the trademark has been filed or is registered is optional.
Conversion into a National Trademark
If the application for a European Union trademark is not accepted, or is annulled or revoked after registration for reasons pertaining to only one or some European Union states, conversion of the application into national applications in the remaining states is possible, under certain conditions.
The registration of a European Union trademark gives the owner the right to request customs protection, involving the seizure of counterfeit products at customs.
Applicable International Agreements
The Paris Convention and the TRIPs Agreement (World Trade Organization members), the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.