Registered trademarks are territorial in nature. Your trademark rights can be enforced (subject to certain international conventions) only in the country where it is registered. However, a registered trademark in the European Union (EU) would be automatically protected in every EU member state. These rights complement national intellectual property rights and are linked to international intellectual property systems.

The European Union Intellectual Property Office (EUIPO) is responsible for registering and managing the EU trademarks. The EUIPO allows you to register various types of marks depending on what is the most relevant to your business. Some examples include word marks, figurative marks, and sound marks. It is not necessary to be established or trading in the EU before applying for an EU trade mark. EUIPO does not examine ‘intention to use’ as a refusal ground. However, once registered, a mark must be put to genuine use within five years or it can be revoked, and applications filed in bad faith (for example, proven absence of any intention to use for abusive purposes) can be invalidated.

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. It is about how the product is represented. Securing a registered trademark is an important step to protecting your brand and preventing competitors from using any creative ideas, names, or symbols that your business represents, without your consent.

In this article, you will discover the scope of protection that a registered EU trademark offers as well as other relevant practical aspects to consider throughout the registration process.

International Scope

The most efficient and cost-effective method of registering and renewing an international mark is through the Madrid Protocol (also known as the Madrid System). This is the primary international registration system which allows you to protect your mark in several designated territories without the time and expenses of having to apply and renew trademark registrations individually in each country. The World Intellectual Property Organisation (WIPO) based in Geneva; Switzerland is responsible for administering the Madrid Protocol.

All EU member states and the EUIPO are contracting parties to the Madrid Protocol. If you make an application for an EU trademark (EUTM), formerly known as Community Trademark (CTM), you can use that as a basis to file an international application or alternatively in an application for an international registration under the Madrid Protocol, you can designate the EU as a territory. To file a EUTM, you must submit the application for that mark to the EUIPO.

Benefits of the European Trademark

By filing a trademark application with the EUIPO, you will obtain a unitary tittle that can protect your sign throughout the EU and the 27 member states. Please note that as of 1 January 2021, international trademark registrations protected in the EU under the Madrid Protocol no longer enjoy protection in the UK. Since 1 January 2021, the UKIPO (not EUIPO) automatically created ‘comparable UK trade marks’ for all holders of existing EUTMs (including certification and collective marks) so that protection continued in the UK.

Another attractive component of the EUTM is that it is subject to a single review by the EUIPO. Standard applications are published about 8–11 weeks after payment; a 3-month opposition period then runs. Unopposed applications often proceed to registration around 4–6 months from filing, but this is not guaranteed. The EUTM does not undergo a review in each of the 27 member states, and once it is registered it will be protected for 10 years in all EU member states. A EUTM has to be renewed every 10 years, but it is renewable indefinitely.

In comparison to a trademark application filed in each EU member states, the fees charged by the EUIPO are potentially more cost-effective in relation to the scope of protection. This is a contentious point that is best determined with the assistance of professionals who can help to assess how to safeguard your intellectual property rights based on your company’s specific circumstances and brand.

Risks associated to the European Trademark

Due to the unitary nature of the EU trademark, there is risk that the trademark may not be registered if the owner of an existing mark opposes the registration of the new mark. For example, if a French proprietor believes that an EU trademark infringes their national trademark rights, they can object to it by filing an opposition application at the EUIPO. The application for registration of the new mark may then be wholly or partially rejected.

Prior rights opposable to an EU trademark include all exiting national trademarks of the EU member states, as well as all international trademarks which designated the EU or any of the 27 EU member states. In order to avoid wasting costs and dealing with potentially a large number of opposition applications, it is best to consult legal professionals who can guide you through the best strategy to protect your intellectual property rights.

Because an EUTM is unitary, a refusal or cancellation takes effect EU-wide; however, the applicant/owner can often convert the EUTM (or application) into national applications in selected Member States, generally keeping the original filing/priority date, subject to the limits in Article 139 EUTMR.

Concluding Thoughts

Whilst the EUTM seems affordable at the onset, it may cost you more if you haven’t taken the necessary steps to evaluate all the options available and minimise the risks of rejection and cancellation. Your intellectual property rights, especially your trademarks, may be your most valuable, or even only, business assets. If you already have or intend to expand your business activities in the EU or internationally, you should seek advice from an intellectual property professional to ensure that your interests are adequately protected everywhere.  At Startway, our intellectual property team can help to advise you on your trademark strategy.

Our insights, articles and guides do not, and are not intended to, constitute legal advice or be an exhaustive review of all legal developments. Although every effort is made to ensure that the information provided in this article is accurate as of the publication date, please be aware that this is area of law may be subject to change. Please seek legal advice before applying the information provided to any specific circumstances, transactions or legal issues.