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Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
No written authorisation to act before the EU Intellectual Property Office (EUIPO) is required.
What information and documentation must be submitted in a trademark registration application?
The following information and documentation must be submitted:
- a request for registration of an EU trademark (if filed on an EUIPO form, no express request is necessary);
- information to identify the applicant (its name, address and nationality, and the state in which it is domiciled or has its seat or an establishment);
- a representation of the trademark;
- a list of goods and services, listed by international class; information to identify the representative (where relevant); and
- the signature of the applicant or the representative (if not filed electronically).
In order to have a filing date accorded, the application fee must be paid. A second language must be designated in the application for the purposes of disputes. Where the first language is one of the five working languages of the EUIPO (English, French, German, Italian and Spanish), the second language can be any other official language of the European Union. Where the first language is one of the official languages of the European Union other than the working languages of the EUIPO, the second language must be one of those five languages.
What rules govern the representation of the mark in the application?
For now, the EU trademark must be capable of being represented graphically. This condition will be abolished as of October 1 2017. If the EU trademark application is not a word mark, the mark type must be indicated. For three-dimensional marks, the (photo)graphic representation may consist of up to six perspectives of the same shape submitted on a single A4 sheet or a single JPEG file. For sound marks, the representation may consist of a musical notation or MP3 file with, for example, sonogram. For colour(s) per se marks, an inclusion of internationally recognised colour codes is highly recommended.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
The application fees are as follows:
- Individual mark ‒ €1,000 (for one class of goods or services),€50 (for a second class of goods or services) and €150 (or each additional class of goods or services);
- Individual mark filed electronically ‒ €850 (for one class of goods or services), €50 (for a second class of goods or services) and €150 (for each additional class of goods or services);
- Collective mark or certification mark ‒ €1,800 (for one class of goods ), €50 (for a second class of goods or services) and €150 (for each additional class of goods or services);
- Collective mark or certification mark filed electronically ‒ €1,500 (for one class of goods or services), €50 (for a second class of goods or services) and €150 (for each additional class of goods or services).
How are priority rights claimed?
Up until October 1 2017, priority may be claimed either at the time of filing the EU trademark application or within two months of the filing date. From October 1 2017, all priority claims must be made together with the application. The claim must include the date, number and country of the previous application. Documentation in support of priority claims must be filed within three months of the filing date, although the EUIPO does not require such documentation where the information required is available to it from other sources (eg, through the TMView database).
Are trademark searches available or required before filing? If so, what procedures and fees apply?
The EUIPO does not require trademark searches before the filing of an EU trademark application. However, the electronic filing process allows applicants to conduct, for free, a search of earlier potentially conflicting EU trademarks or trademarks protected in EU member states. That said, the results of this search are not binding on the EUIPO and are for information purposes only.
What factors does the authority consider in its examination of the application?
The EUIPO examines an EU trademark application for formalities, classification, priority and/or seniority, compliance with the regulations governing use of the mark, in the case of collective marks, and absolute grounds for refusal. All of these examination steps can be carried out in parallel, as there is no strict sequence in examination proceedings.
Does the authority check for relative grounds for refusal (eg, through searches)?
The EUIPO does not issue relative grounds for refusal ex officio. However, it does carry out an EU search and will notify the proprietors of earlier similar EU trademarks which have opted in of publication of the EU trademark application. An EU trademark applicant which has opted in to such search reports will receive a list of the relevant conflicting earlier marks. Further, national search reports from a limited number of participating offices are available upon the applicant’s request at the time of filing, for a fee.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
The applicant will be notified of any deficiency and given two months (extendible) from notification to remedy it and/or submit observations. The measures to be taken depend on the nature of the objection, but may include amendments to classification.
Can rejected applications be appealed? If so, what procedures apply?
Any decision partially or wholly refusing (or revoking or invalidating) an EU trademark application or registration is appealable. A notice of appeal must be filed in writing and the appeal fee must be paid within two months of the date of notification of the contested decision. If the notice of appeal does not contain the grounds on which the appeal is based, a statement of grounds must be lodged within four months of notification of the contested decision. These time limits cannot be extended. Further appeals are available to the EU General Court and then to the European Court of Justice.
When does a trademark registration formally come into effect?
The rights conferred by an EU trademark registration prevail against third parties from the date of publication of the registration in the EU Trademark Bulletin, although reasonable compensation may be claimed in respect of acts occurring after the date of publication of an EU trademark application.
What is the term of protection and how can a registration be renewed?
The term of registration of an EU trademark is 10 years from the filing date of the application. Registration may be renewed indefinitely for further 10-year periods. The request for renewal and the renewal fee must be submitted within six months (or within a further period of six months upon payment of an additional fee amounting to 25% of the total renewal fee, subject to a cap). The request must be submitted in one of the five working languages of the EUIPO and contain the name and address of the party requesting renewal and the registration number of the EU trademark. The extent of the renewal is deemed total by default (otherwise it must be specified).
What registration fees apply?
What is the usual timeframe from filing to registration?
Under four months, assuming no objections or oppositions.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes ‒ a third party, based on its earlier rights anywhere in the European Union, may file a notice of opposition (subject to payment of the opposition fee of €320) within three months of publication of an EU trademark application (this three-month opposition period begins to run one month after publication in the case of international registrations designating the European Union). The filing language must be one of the five working languages of the EUIPO (English, French, German, Italian and Spanish), and must coincide with one of the two languages chosen by the EU trademark applicant. The notice of opposition must specify:
- the contested EU trademark application and the goods and services against which the opposition is directed;
- the earlier marks or rights on which the opposition is based;
- the grounds for opposition;
- the goods and services on which the opposition is based;
- the scope of reputation, if applicable (ie, individual member states or entire European Union);
- the opponent;
- the representative, if applicable; and
- the opponent’s signature, if sent by fax or post.
When the opposition is found admissible, there is a cooling-off period (two months, extendible to 24 months) designed to encourage amicable settlement. The opponent is given two months after the expiry of the cooling-off period to substantiate its earlier right(s) and submit facts, evidence or arguments in support of its opposition, following which the EU trademark applicant has the right to respond. Further rounds of correspondence are possible, especially where proof of use is requested (ie, where the opposing right has been registered for more than five years and the applicant requests that the opponent prove that its mark has been put to genuine use).
What is the usual timeframe for opposition proceedings?
Because of the cooling-off period, the length of oppositions can vary significantly. Many oppositions are also closed prior to a decision following amicable settlement. However, if the cooling-off period is not extended and no suspensions are granted, a first-instance decision is usually handed down within one year of filing the opposition.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes. Any decision partially or wholly refusing (or revoking or invalidating) an EU trademark application or registration is appealable. A notice of appeal must be filed in writing and the appeal fee must be paid within two months of the date of notification of the contested decision. If the notice of appeal does not contain the grounds on which the appeal is based, a statement of grounds must be lodged within four months of notification of the contested decision. These time limits cannot be extended. Further appeals are available to the EU General Court and then to the European Court of Justice.
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