European Union (EU) Trademark

EUROPEAN UNION (EU) TRADEMARK

Trademark protection can be acquired for all member states of the European Union

through filing an application for European Union trademark registration (EUTM registration) at the European Union Intellectual Property Office (EUIPO).

Its considerable advantage is the territorial protection which extends to the entire territory of the European Union (all 28 member states), in combination with a single, fast and cost-effective procedure, subject to uniform requirements for trademark registration and also using a single administrative institution that registers European Union Trademarks, namely the European Union Intellectual Property Office (EUIPO) located in Alicante, Spain. EUIPO’s centralised and thus cost-effective and time-saving EU trademark registration procedure may be conducted in the official languages of any EU member states in combination with either one of – English, French,German, Spanish or Italian.

A registered EU Trademark has unitary character which means that EU trademark applicants can only receive protection for all member states of the European Union and cannot arbitrary select particular countries of interest. Hence, in each EU member state the EU trademark registration gives its proprietor the same rights as would be conferred by a national trademark registration in that country, i.e. by a registered Bulgarian Trademark.

Similarly, on account of its unitary character, an EU Trademark may only be refused for all EU countries. However, the EU trademark can then be converted into a national trademark registration, acquire protection for the territory of a particular country and at the same time keep the filing date of EU TM application. For instance, conversion of European Union trademark into application for a Bulgarian Trademark Registration is possible if it is duly filed in Bulgarian language at the Bulgarian Patent Office within the prescribed deadlines upon refusal.

WHO CAN FILE EU TRADEMARK APPLICATION?

European Union trademarks’ procedure is an open filing trademark system, which means that any person in the world may file a European Trademark application, irrespective of whether he is a national of or has his residence or place of business in a country member of the EU. However, if the EUTM applicant does not have his place of business, a real and effective establishment or his domicile in the European Economic Area, he must appoint European Trademark Attorney for all proceedings before EUIPO except for the filing of the EUTM application. The European Economic Area (EEA) is made up of the 28 Member States of the European Union plus Norway, Iceland and Liechtenstein.

WHAT CAN BE PROTECTED AS EU TRADEMARK?

European Trademarks are registered for any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings; and the representations of which signs can determine the clear and precise subject matter of the protection afforded to its proprietor. The EU TM is always registered in relation to particular goods and/or services.

TERM OF PROTECTION OF EUTM

The term of validity of a European Union Trademark is 10 years as from the date of filing of the European Trademark application, provided the trademark renewals or maintenance fees are paid consistently.

Protection of signs in all EU countries can be derived from two possible ways, either by filing a direct application for European Union Trademark Registration, or by application for International (IR) Trademark Registration designating EU. No matter which routes are taken, assistance, advice and close collaboration with a Qualified European Trademark Attorney is highly recommended and in some cases, as stated above, even obligatory.

SUMMARY OF THE PROCEDURE AND COSTS FOR REGISTERING A EUROPEAN TRADEMARK:

* REMARKS: 1) This is an approximate time scale calculated as from the filing date; 2) Attorney fees are not included and all official fees are tentative

Filing of European Trademark Application

0 WEEKS

A European trademark application consists of: a request for registration a European Union trademark; the name and address of the TM applicant; a representation of the sign which will be registered;a list of the goods and/or services in respect of which the registration is requested. The Official fees due at the filing stage amount to 850 EUR and cover only 1 class of goods and/or services. A surcharge of 50 EUR is also levied for the 2nd class, and 150 EUR for each subsequent class in excess of 2.

Examination of Filing and Formal Requirements

1-2 MONTH

The requirements for according a filing date are assessed during this stage. Additionally, certain formal and substantive aspects of the EU trademark application are examined, including the form and content of the trademark application, payment of the EUTM filing fee; the appointment of European Trademark Attorney, the list of goods and services and absolute grounds of refusal, in particular if the sign in question can perform the function of a trademark, translation requirements. During this stage the examiners may object against some goods/service or the sing per se, and ask for correction and/or limitation of the list of goods/services. These deficiencies might significantly prolong the procedure.

Publication of the European Trademark Application and start of 3 months Opposition period

1.5-2 MONTHS

The publication of the European trademark application contains the representation of the mark and applied lists of goods and/or services. Within a period of three months following the publication date of the application, any person may file objections against the registration of the mark based on the absolute grounds. Within the same three months, applicants and owners of prior trademark rights, pertinent to the EU territory, may also oppose the registration in question, but on relative grounds. This is the so called Opposition period which is prescribed to 3 months by law and cannot be expedited upon request. It must be highlighted that the responsibility for opposing TM applications, which are identical or confusingly similar to prior trademark applications or registrations, is entirely within the capacity of the third parties and owners of prior rights. The EUIPO will in no way examine trademark applications on these grounds.

End of Opposition period

5 MONTHS

The Opposition period terminates 3 months after the publication of the EUTM application and if no oppositions have been lodged against the EUTM application in question, the European Trademark Application is considered allowable and ready for registration. It must be highlighted that the herewith indicated period for opposition as above is in the case of a smooth and straightforward TM registration procedure, in particular in the case where the no opposition or objections by third parties have been filed against the processed trademark. In case of objections or filed oppositions, the period for registration depends on each case independently, and can even last about 1-2 years.

Registration and issuance of EU Trademark Registration Certificate

6-8 MONTHS

The European Union Trademark is then registered, published as registered and recorded in the EUIPO's trademark register. The EUTM trademark owner is then issued an electronic EUTM registration certificate. The EUTM owner acquires protection for its trademark for a period of 10 years calculated as of the date of filing.

Obligation to use the registered European Trademark

< 10 YEARS

European Union trademark protection is not an end in itself. Unused EU trademarks are an artificial barrier to the registration of new trademarks. Hence, there is an absolute need to provide for a use obligation. On the other hand, trademark owners need a grace period after registration before the use obligation comes into effect. Hence, the European Trademark Law has provided that if within a period of five years following EUTM registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to revocation unless there are proper reasons for non-use. In principle, upon expiration of the 5 year period as prescribed by law, the EU TM protection is practically reduced to the goods/services on which the mark is actually used and goods/services similar to them. Any goods and/or services for which the trademark was registered but have not been in use, should no longer be a valid basis for asserting exclusive trademark rights and can be objected by third parties.

EU Trademark Monitoring and Enforcement

< 10 YEARS

The European Trademark Registration is not an end in itself. EU trade mark owner must be his own policemen and safeguards his exclusive rights because they are not automatically applied to infringers. The market use and/or attempts for registrations of confusingly similar trademarks by your competitors must constantly be monitored and subsequently enforced in order to avoid financial loss and/or harming your reputation. The trademark monitoring and enforcement protect the time and money you have invested in building your trademark image on the market.

Trademark Renewals

EVERY 10 YEARS

The validity of European trademark registration is 10 years from the filing date of the EU trademark application. The registration may be renewed indefinitely for consecutive periods of 10 years provided trademark renewal fees are periodically paid before the expiry of the EU Trade mark's term of protection. The costs for European Union Trademark Renewal amount to 850 EUR and cover only 1 class of goods and/or services. A surcharge of 50 EUR is also levied for the 2nd class, and 150 EUR for each subsequent class in excess of 2. Missing the deadline for TM renewal can be remedied within 6 months following the term of expiry and by paying a surcharge. Missing this period will have the effect that the European Union Trademark Registration has expired, thus the legal protection terminated and anyone may use it in EU without infringing any rights outstanding.

Need assistance?

EQE qualified European Patent & Trademark Attorney | Bulgarian Patent & Trademark Attorney

European Union (EU) Trademark