This is general information not intended to be used as legal advice for a specific case. If you intend to file a EUTM application, please consult a European trademark attorney. Feel free to contact us for finding European trademark attorneys.
European Union Trade Mark (EUTM)
A trademark right in Europe can be acquired by filing a trademark application in European countries or by filing an European Union Trade Mark (EUTM) application with European Union Intellectual Property Office (EUIPO). When a trademark application is filed in an European country, a third party can use or register a trademark similar to the filed trademark in another European country in which the trademark application has not been filed. On the other hand, once an EUTM is registered, the registered trademark can be protected in all countries of European Union (EU). Also, if any country newly becomes a member of the EU, the registered trademark can be automatically protected in the new member country.
[Trademarks Eligible for Registration]
In addition to a "word mark" or a "three-dimensional mark", a "sound mark" or an "animation (moving) mark", a "hologram (a three-dimensional image printed by laser beam) mark", a "scent mark" and the like can also be registered.
You can disclaim any exclusive right to an element of the mark which appears not distinctive when filing a EUTM application so that the application is less likely to be refused.
[From Filing an Application to Registration and Renewal]
A "filing date" indicates a date when the EUIPO receives an application document.
It is necessary to clearly state a designated goods/designated service per class of goods/service when filing an application. It should be noted that when a class heading according to the Nice Classification is used to state a designated goods/service, the scope of the designated goods/service is interpreted as the goods/service literally described in the class heading. Accordingly, if goods/services which are to be designated but are not included in the class heading in their literal meanings, it is necessary to clearly state all of the goods/services.
The EUTM application can be filed in any official languages of the EU ("first language"). A different "second language" must be selected from one of the five official languages of the EUIPO, namely, Spanish, German, English, French or Italian.
A formality examination and an examination for "absolute grounds for refusal" which are described in the followings as some examples are performed:
trademarks which are devoid of any distinctive character;
for three-dimensional trademarks, the entire shapes of which result from the nature of the goods or necessities to obtain a technical result; and
trademarks which would deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
When absolute grounds for refusal is found, a notice of reasons for refusal is issued to the Applicant. The Applicant can make a response or an argument by submitting a written opinion or an amendment.
The Examiner may request the applicant to disclaim any exclusive right to an element of the mark which is not distinctive.
The relative grounds for refusal (which will be described later) are examined only if a notice of opposition is filed against the application.
In a case where the Applicant paid an official fee for the application, the EUIPO carries out an anticipation search of the applied trademark to see whether any earlier identical or similar trademark application or registered trademark (earlier trademark) is present or not. A search report (European Union Search Report) is sent to the Applicant along with a notification of the search to the earlier trademark owner if any.
A "publication of " the application is issued within about one month from the date when the search report is sent.
When the Applicant further paid an official fee, Patent Offices of the EU member countries which adopt a trademark search system also carry out the anticipation searches, and a National Search Report is sent to the Applicant. If a National Search Report is requested, the searches are carried out by all of the EU countries which provide national searches. However, some EU countries which do not adopt a trademark search system, such as France, Germany, Italy, Cyprus, Malta, Slovenia, Estonia, Latvia and England, do not provide the national searches. Also, the National Search Report cannot be requested for one specific country, for example, for the Czech Republic only.
A EUTM application is published about one month after the Community search report is sent. The earlier trademark owner can file an opposition to a later filed trademark application within three months from the publication.
When an opposition is filed, the applicant is notified of the opposition. Both parties can contact one another to pursue a friendly settlement in a "cooling-off period," which is two month from the notice and extendable up to 22 months.
For example, the applicant may agree to delete relevant goods from the application, and the opponent may withdraw the opposition. If the parties reach an agreement, the opposition fees paid by the opponent will be refunded.
If a negotiation is not realized during a cooling-off period, "relative grounds for refusal" is examined. In a case where the trademark and the goods/service are similar to earlier trademarks, the trademark cannot be registered.
If nobody files an opposition or opposition is not approved, the EUTM is registered, which is valid for 10 years from the filing date.
(cf. A Japanese trademark registration is valid for 10 years from the registration.
The renewal should be requested within six months ending on the last day of the month in which the protection ends. The renewal fees must also be paid within this period.
Elimination of later trademarks
If the EUIPO notifies of a later application, it is necessary to oppose to the registration of the later application. However, an opposition cannot be filed if five or more years have passed from the registration of the earlier trademark and the earlier trademark has not been used for last five years.
It should be noted that in a case where an opposition is filed on the grounds of earlier registered trademark, if the earlier trademark is registered 5 years prior to the filing date or the priority date of the later trademark which the opposition is against, a proof of use of the earlier registered trademark is often requested from the Applicant of the later application. Therefore, it is necessary to estimate the cost of this proof in advance when filing an opposition.
[Revocation and Invalidation]
The registration can be revoked, if the registered trademark has not been used for last five years.
The earlier trademark owner can request an invalidation of a later trademark registration within five years after the earlier trademark owner recognizes that the use of the later trademark.
Official filing fee:
|3 and more
||add 150/per added class
* Note that no trademark registration fee is necessary (0 Japanese yen).
Japanese and local attorney fees are inexpensive compared to fees for filing applications in several EU member countries.
[Advantages and Disadvantages of EUTM Applications]
The EUTM system provides an exclusive trademark right in all EU Member States by a single registration. The trademark owner only needs to appoint one representative or IP firm in any one of the EU Member States. It is cost effective.
Easy to avoid revocation based on disuse
If the trademark is used in one EU Member State, the revocation for no-use would be avoided.
The trademark owner is not allowed to file a EUTM application only in the selected EU member States in which the application is likely to be allowed.
Effects of refusal, revocation or invalidation
If grounds for refusal are found in one EU Member State, the EUTM application is refused. Similarly, if revocation or invalidation is declared, the registration is revoked or invalidated in all EU Member States.
If the EUTM application is refused, it can be converted to domestic applications in one or more EU Member States. However, the trademark owner needs to appoint a representative for each state where the domestic application is filed. This increases overall fees. It is important to conduct trademark searches before filing a EUTM application.
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