Trademark applications for European Union Trademarks are filed through the European Union Intellectual Property Office (EUIPO).
A registered European Union Trademark (EUTM) grants recognition and protection in all 28 member States of the European Union. The member states of the EU are: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.
European Union Trademarks are also recognized in the following territorial dependencies of EU member states:
- Finland – Aland Islands.
- France – Guadeloupe, French Guiana, Martinique and Reunion.
- Portugal – Azores and Madeira.
- Spain – Canary Islands and Ceuta and Melilla
- United Kingdom – UK legislation states that European Union trademarks (EUTMs) shall be recognized automatically in the Isle of Man, Jersey and Gibraltar.
The European Union is a “first-to-file” jurisdiction, which means that except in some specific cases, the rights to a trademark are granted to the first person to file it, not the first person to use it.
Use of the trademark prior to registration, however, may be useful in case an objection on the grounds of lack of distinctiveness, as it may demonstrate acquired distinctiveness and help overcome the refusal.
Non-use of the trademark for a period of more than five (5) years after the registration date leaves the trademark vulnerable to cancellation actions for non-use. Additionally, in case the owner of a trademark that is not being used files an opposition against an application, such non-use might cause the opposition to be rejected if it is proven.
The EU trademarks office (EUIPO) will examine the application to check whether the trademark complies with the requirements for registration. It will not check the existence of identical or confusingly similar filed or registered trademarks. Once the examination has been completed and if the mark complies with the requirements for registration it will be published for a period of three (3) months in which interested third parties may choose to file an opposition.
Please note that in order to confer a trademark owner the right to use the trademark in any color combination the filed logo (device) for the application through EUIPO should be in black and white. If the filed logo (device) is presented in color, the owner will only be conferred the right to use the trademark in the colors of the filed logo (device).
If you register a combined trademark (which includes both word elements and figurative elements) through the European Union Intellectual Property Office (EUIPO), the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
In the European Union registration of a trademark is granted for a period of ten (10) years starting on the application date. It can then be renewed indefinitely for successive terms of ten years each. The renewal can be requested in the six (6) months preceding the expiration date, until the last day of the month in which the mark expires, or until six (6) months afterwards subject to the payment of additional fees.
Once the trademark has registered, the EUIPO will issue a digital certificate of registration. No hard copy of this certificate is issued.
The European Union is a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.