The European Union (EU) Trade Mark application process

Introduction

An EU trade mark (EUTM) registration is a unitary registration that provides trade mark rights in all twenty-seven European Union (EU) member states. Accordingly, the EUTM system provides a relatively inexpensive means of securing trade mark protection throughout the EU. As from 1 January 2021, EU trade mark registrations no longer cover the UK.

Application procedure

In order to obtain an EUTM registration, an application is filed at the European Union Intellectual Property Office (EUIPO), or via a trade mark registry of an EU member state who will forward it to the EUIPO. There are no nationality or domicile restrictions over whom may apply for or own an EUTM registration.

The application must include the applicant(s)' details, a representation of the mark, and a list of all of the goods/services for which registration is sought. The correct fee must be paid, with filing costs depending upon the number of classes included in the application. The application can be made in any one of the EU official languages, but a second language must also be nominated from one of the five official languages of the EUIPO, namely, French, German, Spanish, Italian and English.

Examination

The first stage after filing the application is for the EUIPO to consider whether an application meets the formal filing requirements, including requirements relating to the classification of goods/services. Once any classification objections have been resolved, the EUIPO will carry out substantive examination to assess whether the sign for which protection is sought is a trade mark and, if so, whether it is the type of mark that is registrable (examination on absolute grounds). If any objections are raised, there is an opportunity to respond to the objections, and the application cannot proceed until all objections have been dealt with.

The EUIPO (and optionally the national offices of a limited number of EU member states, on payment of a fee) will carry out searches of the relevant trade mark registers for conflicting trade mark applications/registrations. The results of these searches are forwarded to the applicant, but they are for information purposes only, and there is no opportunity to respond. The EUIPO cannot refuse an application on the basis of earlier applications or registrations, but will notify the proprietors of all earlier marks listed in the searches, giving them the opportunity to oppose the later-filed application.

Acceptance

If an application is accepted, details of the application will be published in the European Union Trade Marks Bulletin, and third parties will have three months from the publication date to oppose the application. An opposition can only be filed on the basis of earlier rights (so-called relative grounds), and must be filed by the owner (or in some circumstances a licensee) of those earlier rights. The opposition can be filed in either language of the opposed application, provided it is an official language of the EUIPO.

If no opposition(s) are filed (or any opposition is overcome), the application will proceed to grant, with the issuance of a digital certificate of registration. An EUTM registration lasts initially for ten years from the filing date, but provided the appropriate renewal fee is paid every ten years, a registration may last indefinitely.

Conversion

As an EU trade mark is a unitary right, where grounds exist for refusing an EUTM application in one or more member state, the application will be rejected as a whole. In these circumstances, it is possible to convert an EUTM application into national applications, retaining the filing date of the EUTM application, in any of the member states where the grounds for refusal do not apply.