EU Trade Marks

Author S Solberg J
Creative Commons Attribution 3.0 Unported licence
Source Wikipedia

14 June 2017 Revised 10 Oct 2018 and 13 Jan 2021

A European Union trade mark ("EUTM") is a trade mark that is registered for the whole European Union under the provisions of Council Regulation (EC)  2017/1001 of 14 June 2017 on the European Union trade mark ("the EU trade mark regulation"). An EU trade mark has a unitary character and equal effect throughout the EU. It may only be registered, revoked, declared invalid or transferred in respect of the whole EU.

Brexit

The EU trade mark regulation applied to the UK until 23:00 on 31 Dec 2020.  Art 54 (1) (a) of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community provided for the holder of an EUTM  to become the holder of a UK trade mark consisting of the same sign, for the same goods or services.  That article is implemented by reg 2 and Sched 1 to The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 which inserts a new s.52A and  Sched 2A into the Trade Marks Act 1993.  

European Union Intellectual Property Office

Applications to register EU trade marks are made to the EU Intellectual Property Office ("EUIPO") at Alicante in Spain (see Auntie Jane's Trade Mark Tips: No. 2 EU and British Trade Marks 9 June 2017 NIPC-Branding). EUIPO was formerly known as the Office for Harmonization in the Internal Market (Trade Marks and Designs) ("OHIM").

What may be registered?

With a number of exceptions, any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging many be registered as an EUTM, provided that such sign is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

What are the Exceptions?

The exceptions fall into two groups:

• those that are inherently objectionable such as marks that are devoid of distinctive character, offensive or are too similar to royal, national or other protected emblems; and
• those that are the same as, or similar to, marks that have already been registered or applied for or which are used in relation to the same or similar goods or services.

Refusals on the ground that the mark is inherently objectionable are known as "absolute grounds of refusal".  Refusals on the ground that the mark is the same as or similar to an earlier mark are known as "relative grounds of refusal."

Applications to register an EUTM

Applications to register marks as EUTM may be made online or manually on prescribed forms in relation to specified goods or services. An application can also be made through the World Intellectual Property Organization pursuant to the Madrid Protocol. It is advisable but not compulsory to instruct a trade mark attorney to file the application (see Jane Lambert Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 NIPC-Branding).

Examination

Applications are examined by the EUIPO for compliance with the formalities and whether they are inherently objectionable. If the EUIPO objects to any aspect of the application, it will notify the applicant and give it an opportunity to respond, If the EUIPO considers that the objection cannot be overcome it may refuse the application.  An applicant may appeal against the EUIPO's decision to a tribunal known as a "Board of Appeal".  Decisions of Boards of Appeal may be challenged in the General Court of the Court of Justice of the European Union.

Opposition

If there is no objection or if all objections are overcome, the EUIPO will publish the application in all the official languages of the EU. Publication gives an opportunity to those who have already registered, or applied to register, the same or a similar mark in respect of the same or similar goods or services, to oppose the application. Those who could prevent the use of a mark by, for example, bringing a claim for passing off may also oppose the application. Oppositions are determined by an opposition division from which appeals lie to a Board of Appeal and from there to the General Court.

Registration

If there is no opposition, or any opposition is disposed of, the application will be granted. The mark will be registered with effect from the date of filing. Notice of registration will be published. The applicant will receive a certificate of registration. Upon registration, the proprietor acquires exclusive rights in the trade mark which are infringed by use of the trade mark without his or her consent.

Infringement

An EUTM is infringed by using in the course of trade:

• a sign which is identical with the EUTM in relation to goods or services which are identical with those for which the EUTM is registered; or
• a sign where because:
  - the sign is identical with the EUTM and is used in relation to goods or services similar to those for which the trade mark is registered, or
  - the sign is similar to the EUTM and is used in relation to goods or services identical with or similar to those for which the EUTM is registered,
  there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the EUTM; or
• in relation to goods or services a sign which is identical with or similar to theEUTM where the EUTM has a reputation in the EU and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Enforcement
Each EU member state is required to designate a limited number of courts as EUTM courts. Since 23:00 on 31 Dec 2020,  the courts h=of the UK have have ceased to be EUTM courts.

Invalidity

A court or cancellation division may declare a registration invalid on any of the grounds upon which an application to register a trade mark could have been opposed if it appears that the EUTM should never have been registered. An application for a declaration of invalidity may be raised by a defendant as a counterclaim in infringement proceedings or in an application to the EUIPO. Appeal lies from the cancellation division to a Board of Appeal and from there to the General Court.

Revocation

The court or EUIPO may revoke the registration of a trade mark if ts not used, ceases to be used, ceases to be distinctive or becomes deceptive. An application for the revocation of a mark may be raised by way of counterclaim in infringement proceedings or in an application to the EUIPO. Revocation proceedings before the EUIPO are determined by a cancellation division.  Appeals from decisions of the cancellation division lie to a Board of Appeal and from there to the General Court.

Further Information
Further information on registered trade marks can be obtained from Jane Lambert on 020 7404 5252 during office hours.