European Union trade mark

SUMMARY OF:

Regulation (EU) 2017/1001 on the European Union trade mark

WHAT IS THE AIM OF THE REGULATION?

It establishes EU-wide rules and conditions for the granting of an EU trade mark.

It codifies and replaces Council Regulation (EC) No 207/2009 and its numerous successive amendments.

KEY POINTS

EU trade mark

Any person or company, including authorities established under public law, may obtain an EU trade mark through registration.

It may consist of any signs, in particular words (including personal names), designs, letters, numerals and the shape of goods or of their packaging, provided that such signs are capable of:

distinguishing the goods or services of one business from those of another; and
being represented on the register of trade marks in such a way that the public and the authorities know exactly the subject matter that is being protected.

Owner’s rights

It grants the owner exclusive rights, which prohibit third parties from using any of the following for commercial purposes:

any sign which is identical with the EU trade mark in relation to goods or services which are identical with those for which the EU trade mark is registered;
any sign where there is a likelihood of confusion with another trade mark;
any sign which is identical with, or similar to, the EU trade mark in relation to goods or services which are not similar to those for which the EU trade mark is registered, where use of that sign takes advantage of the reputation and distinctive character of the trade mark.

However, the owner of the EU trade mark may not prohibit third parties from using the following for commercial purposes:

the owner’s own name or address;
indications concerning characteristics of goods or services such as the kind, quality or quantity;
the trade mark where it is necessary to indicate the intended purpose of a product or service, as accessories or spare parts.

Application

Applicants must file an application for an EU trade mark with the European Union Intellectual Property Office (EUIPO).

The application must contain the following information:

a request for the registration of a EU trade mark,
information identifying the applicant,
a list of the goods or services in respect of which the registration is requested,
a representation of the trade mark.

Applicants must also pay an application fee. The application fee must be paid within 1 month of the filing date — the date on which the documents are filed with the EUIPO.

Registration

Once the application has been filed, EUIPO will examine whether it meets all the conditions for the granting of an EU trade mark.
Publication of the application will allow third parties opposed to the granting of the trade mark to do so, on the basis of earlier rights, in opposition proceedings.
If the application meets all the required criteria and no opposition is either entered or accepted, then the trade mark registration is published.

Duration and renewal

EU trade marks are registered for a period of 10 years from the date of filing of the application.
Registration may be renewed for further periods of 10 years. The renewal application must be filed 6 months before the end of the validity of the registration.

Surrender, revocation and invalidity

An EU trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. The rights of the owner may also be revoked if:

the trade mark has not been subject to genuine use* in the EU for 5 years;
the trade mark has become the common name for a product or service;
the trade mark could deceive the public as to the nature, quality or geographical origin of the goods or services.

The regulation also establishes grounds for invalidity of the trade mark. These grounds include, for example, cases where the applicant acted in bad faith when filing the application for the trade mark.

EU collective marks

When an application for registration is filed, it is possible to designate an EU trade mark as being collective. The following are authorised to file EU collective marks — associations of:

manufacturers
producers
suppliers of services
traders
legal persons governed by public law.

EU certification marks

It is also possible to designate an EU trade mark as a certification mark. The owner of such a mark certifies the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics (excluding geographical origin) of the certified goods and services.

Legal action

Regulation (EU) No 1215/2012 applies to proceedings relating to EU trade marks and applications for EU trade marks, as well as to simultaneous and successive actions on the basis of EU and national trade marks.

EU countries must designate ‘EU trade mark courts’. These courts have exclusive jurisdiction in all disputes concerning the infringement and validity of EU trade marks.

FROM WHEN DOES THE REGULATION APPLY?

It has applied since 1 October 2017.

BACKGROUND

EUIPO replaces the Office for Harmonization in the Internal Market from 23 March 2016 in line with Regulation (EU) 2015/2424 which amended Regulation (EC) No 207/2009 both of which were replaced by Regulation (EU) 2017/1001 .

For more information, see:

EUIPO — trade marks.

KEY TERMS

Genuine use: if a company registers an EU trade mark, uses it for a period and then stops using it for a continuous period of 5 years, the trade mark may be revoked. This is because there is no value in giving protection to trade marks if they are not being used and there is no interest in preventing another company, that might legitimately wish to use the mark, from using it.

MAIN DOCUMENT

Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, pp. 1-99)

last update 13.02.2018