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Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The EU Trademark Regulation (207/2009), as amended, governs trademarks in the European Union. The regulation is currently being re-codified and certain procedural aspects are governed by implementing and delegated legislation which is in the process of being adopted and will come into force on October 1 2017.

 National trademark rights in the EU member states are governed by EU directives ‒ currently EU Directive 2008/95/EC, which will be replaced by EU Directive 2015/2436.

International law

Which international trademark agreements has your jurisdiction signed?

The European Union is a signatory to the following international trademark agreements:

  • the Trademark Law Treaty, signed on June 30 1995;
  • the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, to which the European Union acceded on October 1 2004; and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights, signed on January 1 1995.

Regulators

Which government bodies regulate trademark law?

The following bodies regulate trademark law in the European Union:

  • the European Parliament, the Council of the European Union and the European Commission;
  • the EU General Court (which hears actions for annulment of decisions of the  EU Intellectual Property Office (EUIPO) Boards of Appeal) and the European Court of Justice (which hears appeals from the General Court and requests for preliminary rulings from national courts);
  • the EUIPO (which issues decisions on EU trademarks and design registrations and related proceedings and of which the Observatory on Infringements of IP Rights is part).

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

The European Union is a first to file jurisdiction. While some protections for unregistered rights exist, these are not EU-wide.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

At the EU level, no protection is available to unregistered trademarks. The seventh recital in the preamble to the EU Trademark Regulation specifically states that the rights in an EU trademark “should not be obtained otherwise than by registration”. However, national unregistered trademarks, if they enjoy protection under the laws of respective member states, can be invoked as earlier rights in inter partes proceedings (oppositions and invalidity actions), subject to certain conditions.

How are rights in unregistered marks established?

The protection available to unregistered trademarks is generally available at a national level only and can encompass passing-off, company names, trade names, domain names, titles and so on. The EU Intellectual Property Office (EUIPO) maintains a list of recognised unregistered rights throughout the member states within its guidelines. 

Are any special rights and protections afforded to owners of well-known and famous marks?

The European Union recognises well-known trademarks, as well as trademarks “with a reputation”. ‘Well-known’ and ‘reputation’ denote distinct legal concepts, but there is a significant degree of overlap. In practice, the provisions for the former are invoked only for trademarks which are unregistered in the European Union, since the enhanced protection for trademarks with a reputation requires registration in the European Union. Well-known marks, within the meaning of Article 6bis of the Paris Convention, are generally protected only against identical or similar goods. Trademarks with a reputation which are registered in the European Union benefit from enhanced protection against unfair advantage taken of, or detriment caused to, their distinctive character or reputation ‒ protection which extends to dissimilar goods and services. An enhanced distinctive character through use is deemed to increase the likelihood of confusion. 

To what extent are foreign trademark registrations recognised in your jurisdiction?

The EU Trademark Regulation grants no express benefit to any trademark registered outside the European Union. However, foreign registrations are relevant for the assessment of unauthorised filing by an agent ‒ the bad-faith ground for invalidity ‒ and in practice can be useful for overcoming refusals on absolute grounds by the EUIPO.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

A registered EU trademark bears a presumption of validity unless and until it is invalidated or revoked.

The owner of a registered EU trademark has the right to prevent all unauthorised third parties from using, in the territory of the European Union:

  • an identical sign in the course of trade in relation to identical goods and services;
  • an identical or similar sign in relation to identical or similar goods and services, if a likelihood of confusion exists (including likelihood of association); or
  • an identical or similar sign, irrespective of whether it is used in relation to identical or similar goods and services, where the EU trademark has a reputation in the European Union and use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the EU trademark.

In particular, the following acts may be prohibited:

  • affixing the sign to the goods or their packaging;
  • offering the goods, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services thereunder;
  • importing or exporting goods under the sign;
  • using the sign as a trade or company name or part of a trade or company name;
  • using the sign on business papers or in advertising; and
  • using the sign in comparative advertising in a manner that is contrary to EU Directive 2006/114/EC.

Owners of EU trademarks may also take action against counterfeit goods in transit in the European Union, unless the importer can prove that there is no trademark infringement in the country of final destination.

Who may register trademarks?

Any natural or legal person, including authorities established under public law, may register an EU trademark.

What marks are registrable (including any non-traditional marks)?

The EUIPO recognises many types of mark (word and figurative marks as well as non-traditional marks such as three-dimensional marks, sound marks, colour(s) per se, holograms, animation marks and position marks), under two main conditions set out in the EU Trademark Regulation:

  • The sign must be capable of being represented graphically; and
  • The sign must be capable distinguishing the goods or services of one undertaking from those of others.

The former requirement will be removed from October 1 2017, following which signs may be represented in any appropriate form using generally available technology, subject to certain conditions. Although in theory the examination criteria for non-traditional marks are the same as those for traditional marks, in practice it is more difficult to establish that such marks are distinctive. Further, signs which consist exclusively of the shape or another characteristic of the goods which results from the nature of the goods, which is necessary to obtain a technical result or which gives substantial value to the goods are subject to a separate ground for refusal.

Can a mark acquire distinctiveness through use?

Yes. If a mark is refused or incapable of registration due to lack of distinctiveness, descriptiveness or because it has become customary in the current language of the trade (ie, generic), the applicant may overcome such rejection by proving that the mark has become distinctive in relation to the goods or services claimed based on its use. The evidence must prove that distinctiveness through use was acquired:

  • throughout the territory in which the trademark does not have distinctive character; and
  • prior to the EU trademark application’s filing date, or (in the case of cancellation proceedings) after registration and before the request for invalidity.

Where the mark is devoid of distinctive character throughout the European Union (which is usually the case for non-traditional marks), proof of acquired distinctiveness for each individual member state, while ideal, is not required. Extrapolation of evidence to other member states is possible, provided that the market is homogenous and at least some evidence of use is submitted for the area in which the evidence is extrapolated.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

Any one of the absolute grounds listed in Article 7(1) of the EU Trademark Regulation is sufficient for the refusal of an EU trademark application, as follows:

  • signs which do not meet the requirements of Article 4 (ie, signs which are incapable of being represented graphically and distinguishing the goods or services of one undertaking from those of others ‒ although the graphic representation requirement will fall away from October 1 2017);
  • non-distinctive trademarks ‒ that is, signs that are devoid of any distinctive character (distinctiveness is assessed by reference to the relevant public’s perception of the sign in relation to the goods or services at issue);
  • descriptive trademarks ‒ that is, signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the service, or other characteristics of the goods or service. (A sign is descriptive if it has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. The relationship between the term and the goods and services must be sufficiently direct and specific. If a mark is descriptive, it is necessarily also non-distinctive);
  • generic terms ‒ that is, signs or indications which have become customary in the current language or in the good-faith and established practices of the trade;
  • shapes or other characteristics which:
    • result from the nature of the goods themselves;
    • are necessary to obtain a technical result; or
    • give substantial value to the goods. (The objective of these three grounds is to prevent the exclusive and permanent rights that a trademark confers from serving to extend indefinitely the life of other IP rights, such as patents or designs. Acquired distinctiveness cannot overcome these grounds for refusal);
  • trademarks which are contrary to public policy or to accepted principles of morality;
  • deceptive trademarks ‒ that is, trademarks which are of such a nature as to deceive the public (eg, as to the nature, quality or geographical origin of the goods or services);
  • trademarks which may be refused pursuant to Article 6ter of the Paris Convention ‒ that is, signs which have not been authorised by the competent authorities (eg, armorial bearings, flags and other state emblems of states that are party to the Paris Convention);
  • badges, emblems or escutcheons of particular public interest (other than those covered by Article 6ter of the Paris Convention), unless the competent authority has consented to their use;
  • designations of origin and geographical indications, as long as:
    • use of the EU trademark constitutes direct or indirect commercial use of the designation of origin or geographical indication, or misuse, imitation or evocation, or another misleading practice; and
    • the EU trademark application includes identical or comparable goods;
  • traditional terms for wine, as long as:
    • they are used to indicate that the product has a designation of origin or geographical indication under EU or national law, or to indicate the production or ageing method or the quality, colour, type of place or particular event linked to the history of the product with a designation of origin or geographical indication; and
    • use of the EU trademark constitutes misuse, imitation or evocation, or another misleading practice;
  • traditional specialities guaranteed, which highlight the traditional characteristics of a product in either its production process or composition; and
  • plant variety rights which are identical (or highly similar) to an earlier registered plant variety denomination and which are in respect of plant varieties of the same or a closely related species.

Upon successful opposition by a third party, an EU trademark application will not be registered based on earlier rights invoked in relation to the following relative grounds listed in Article 8 of the EU Trademark Regulation:

  • identity both between the goods or services and between the marks, where likelihood of confusion is presumed and need not be proven (for these purposes, an ‘earlier right’ is an earlier EU or national trademark of an EU member state or Benelux, or an international registration with the same effect, or a well-known mark pursuant to Article 6bis of the Paris Convention);
  • identity or similarity of the signs and identity or similarity of the goods or services, such that there is a likelihood of confusion, including a likelihood of association (for these purposes, an ‘earlier right’ is an earlier EU or national trademark of an EU member state or Benelux, or an international registration with the same effect, or a well-known mark pursuant to Article 6bis of the Paris Convention);
  • unauthorised filing of the proprietor’s mark as an EU trademark by its agent or representative (the opponent must show that it is the proprietor of a trademark acquired anywhere in the world by registration or by use);
  • an earlier non-registered trademark or other sign used in the course of trade of more than mere local significance, provided that the proprietor has the right to prohibit the use of the later trademark;
  • an earlier designation of origin or geographical indication protected under EU legislation or member state laws;
  • an earlier reputed registered trademark, to prevent registration of a later similar or identical application that, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, irrespective of the similarity of the goods or services. Likelihood of confusion is not a condition for the application of this article; rather, a connection between the conflicting marks must be established. This protection also extends to dissimilar goods and services. The earlier mark with a reputation must be an EU trademark or national trademark of an EU member state (or of Benelux), or an international registration with the same effect.

Are collective and certification marks registrable? If so, under what conditions?

EU collective marks are registrable if they are capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. In addition, regulations of use must be submitted governing, among other things:

  • the conditions for membership;
  • the persons authorised to use the mark; and
  • where appropriate, the conditions governing use of the mark, including sanctions.

 Absolute grounds for refusal largely apply equally, except for descriptiveness as to the geographical origin, which is not an obstacle, and designations of origin or geographical indications.

EU certification marks are foreseen in Article 74b of the EU Trademark Regulation, which will come into force on October 1 2017 and will be implemented further by secondary legislation. EU certification marks will allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services that comply with the certification requirements (materials, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin). The owner of the EU certification mark must not itself carry on a business involving the supply of goods or services of the kind certified. Further requirements are similar to those for EU collective marks, including regulations governing use.

Filing and registration

Filing procedure

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?

Yes.

Is electronic filing available?

Yes.

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).

Priority

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).

Searches

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. 

Examination

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.

Registration

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?

None.

What is the usual timeframe from filing to registration?

Under four months, assuming no objections or oppositions.

Opposition

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.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Yes. Cancellation proceedings based on non-use can be initiated by any third party (no legal interest need be shown) if five years have passed since registration of an EU trademark. The EU trademark owner has an extendible period of three months to prove that it has put its EU trademark to genuine use within the territory of the European Union, or that there are proper reasons for non-use. Where genuine use is shown for only some of the goods or services for which the EU trademark is registered, it will be revoked for the remainder. 

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

An EU trademark can be revoked:

  • in the absence of genuine use;
  • if, as a consequence of the acts of the proprietor, the trademark has become the common name for a product or service for which it is registered and the proprietor has not taken sufficient measures to prevent this; or
  • if, as a consequence of its use by the proprietor, the trademark has become misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.

An EU trademark can be invalidated based on the following absolute grounds:

  • The EU trademark was registered in spite of the existence of absolute grounds for refusal; or 
  • The applicant acted in bad faith when filing the application.

An EU trademark can further be invalidated based on the following relative grounds:

  • for the same reasons as those for which a notice of opposition may be filed; or
  • where another earlier right exists in the European Union or in an EU member state that permits the use of the trademark in question to be prohibited (in particular, a right to a name, a right of personal portrayal, a copyright or an industrial property right such as an industrial design right).

Who may file a request for revocation and what is the statute of limitations for filing a request?

Applications for revocation or for invalidity based on absolute grounds may be filed by:

  • any natural or legal person; or
  • any group representing the interests of manufacturers, producers, suppliers or services, traders or consumers which has the capacity in its own name to sue and be sued.

The applicant need not demonstrate an interest in bringing proceedings.

Applications for invalidity based on relative grounds may be filed by proprietors of earlier marks and signs, as well as authorised licensees or persons authorised to exercise the rights.

There is no time limit for filing an application for cancellation (although a revocation action for non-use can be filed only once five years have passed since registration of the EU trademark). However, if the proprietor of an earlier right acquiesces in the use of a later EU trademark for a period of five successive years, the proprietor is no longer entitled to file an application for invalidity on relative grounds, unless that later trademark was applied for in bad faith.

What are the evidentiary and procedural requirements for revocation proceedings?

Cancellation proceedings are initiated through an application for revocation or for a declaration of invalidity and payment of a fee of €630. An application for cancellation must contain, among other things, an indication of the facts, evidence and arguments presented in support of the cancellation grounds. The burden of proving invalidity or the grounds for revocation (other than for non-use) rests with the cancellation applicant, and an EU trademark has a presumption of validity unless and until it is invalidated or revoked.

Appeal

What is the appeal procedure for cancellations or revocations?

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.

Surrender

What is the procedure for surrendering a trademark registration?

An EU trademark registration can be surrendered only by the owner (or its authorised representative) applying in writing to the EUIPO. Surrender has no effect until it has been entered in the EU Trademark Register. From October 2017, the validity of a surrender of an EU trademark which is declared subsequent to the filing of an application for revocation or invalidity will be conditional upon the final rejection or withdrawal of that application for revocation or invalidity. If a licence or other right has been registered, surrender shall be entered only with the agreement of the proprietor of the right. In the case of a licence, the entry will be made on the expiry of a three-month period following the proprietor satisfying the EUIPO that it has informed the licensee of its intention to surrender, or sooner if it proves that the licensee has consented.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Any party that is adversely affected by a decision of the Boards of Appeal may bring an action before the EU General Court within two months of notification of the contested decision. A decision of the General Court may be appealed to the European Court of Justice.

For all infringement actions and, if they are permitted under national law, actions in respect of threatened infringement relating to EU trademarks, national courts and tribunals of first and second instance (the EU trademark courts) have exclusive jurisdiction. Counterclaims may be filed before the EU trademark courts.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

All actions regarding infringement of EU trademarks are under civil law pursuant to the EU Trademark Regulation and are heard by the EU trademark courts of the EU member states. Specific rules govern the jurisdiction and territorial scope of remedies granted by the EU trademark courts. Generally, the procedural rules of the member state involved will govern the proceedings. 

Enforcement actions under criminal law (if counterfeiting is involved) may be brought at national level under the relevant national law. Criminal law enforcement rules for trademarks have not been harmonised in the European Union. As a result, the options available at European level for criminal law enforcement vary considerably. 

Who can file a trademark infringement action?

The proprietor of an EU trademark and authorised licensees can file a trademark action. Subject to a different arrangement in the licence agreement, a licensee may bring proceedings for infringement of an EU trademark only if the proprietor consents. However, the holder of an exclusive licence may bring such proceedings if the proprietor, after formal notice, does not itself bring infringement proceedings within an appropriate period.

What is the statute of limitations for filing infringement actions?

The statute of limitations varies across the European Union. In general, the timeframe is usually between three and six years from the date of the infringement or from the date on which the proprietor knew or ought to have known the facts upon which the action is based.

What is the usual timeframe for infringement actions?

As infringement actions are heard by the EU trademark courts in individual member states, the timeframes can differ considerably. Some EU trademark courts can grant a first-instance decision in three or four months; others can take years. 

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Application may be made to the courts of a member state ‒ not just to an EU trademark court ‒ for such provisional or protective measures in respect of an EU trademark as may be available under the law of that state in respect of a national trademark. The most common such measure is an injunction to prevent imminent or further infringement. The courts hearing the application for provisional or protective measures may have jurisdiction across the European Union and may also act even where another EU trademark court has jurisdiction as to the substance of the matter.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

Where an EU trademark court finds infringement, the primary remedy is an order prohibiting further infringement or threatened infringement, accompanied by measures aimed at ensuring that the prohibition is complied with (eg, a penalty payment).

Damages and other remedies are governed by national law and may vary. In general, there are usually quantified damages in the form of compensation of the claimant’s loss, disbursement of the profits made by the defendant or payment of hypothetical royalties. Under civil law, punitive damages are not usually awarded, but they are possible and are increasingly sought.

Other remedies include claims for seizure and destruction of the infringing products, disclosure of information, rendering of accounts and publication of the judgment.

As a rule, infringement of an EU trademark entitles the owner to remedies across the whole European Union if the relevant EU trademark court has the jurisdiction to grant pan-EU relief. However, pan-EU remedies are limited where, for linguistic or other reasons, there is no infringement in a certain part of the European Union..

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The principle of regional exhaustion applies in the European Union, so proprietors of EU trademarks may prevent the unauthorised placing of all goods on the market in the European Union. Seizure and destruction of counterfeit goods at the European Union’s external border(s) is available. The proprietor of an EU trademark may file an application for action covering all EU member states, as a result of which customs authorities will assist in identifying, seizing and reporting infringing goods. Infringing goods in transit through the European Union may also be seized, even if they are not destined for EU consumers, unless the infringer can prove that there is no infringement in the country of final destination. Grey goods and parallel imports do not fall within the remit of the customs authorities, although the proprietors of EU trademarks can take civil action to prevent their sale for the first time in the European Union.

Defence

What defences are available to infringers?

A number of defences are available, as follows:

  • honest use of the name or address of a natural person (the ‘own name’ defence);
  • honest use of non-distinctive and descriptive signs or indications;
  • honest referential use of signs and indications regarding the intended purpose of goods or services (resale of genuine goods, indication of accessories or spare parts);
  • use of an EU trademark in relation to goods which have been put on the market in the European Economic Area under that mark by the proprietor or with its consent (exhaustion of rights);
  • use of a later EU or national trademark which has not been declared invalid;
  • use of rights acquired before the filing or priority date of the EU trademark registration;
  • tolerated use of a later sign by the EU trademark proprietor (acquiescence);
  • due cause, where reputation of the earlier EU trademark is claimed and there is unfair advantage or detriment;
  • the existence of absolute grounds for refusal (by way of invalidity action or counterclaim);
  • use or registration of a later mark, if the EU trademark was liable to be revoked for non-use at the time the later mark was adopted; or
  • evidence that the EU trademark proprietor is not entitled to prohibit the placing of goods in transit through the European Union on the market in the country of final destination.

Appeal

What is the appeal procedure for infringement decisions?

First-instance decisions of national EU trademark courts can be appealed to the EU trademark courts of second instance under the conditions determined by the national laws of the respective member state. Further appeals may be available where the member state’s judicial system has a third instance. EU trademark courts may make references on points of law (in particular on the EU Trademark Regulation) to the European Court of Justice.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

An EU trademark may be transferred in respect of some or all of the goods or services for which it is registered, but only in respect of the entire European Union. The assignment must be in writing and be signed by the parties. An assignment must be entered in the EU Trademark Register for it to have effect with respect to third parties without notice, and for the assignee to invoke the rights arising from the EU trademark.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

An EU trademark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the European Union. A licence may be exclusive or non-exclusive. Unless the licence agreement provides otherwise, the licensee may bring proceedings for infringement of an EU trademark only if the proprietor consents. An exclusive licensee may bring proceedings in its own name if the EU trademark proprietor does not, after notice, bring infringement proceedings itself within an appropriate period. A licensee is entitled, for the purposes of obtaining compensation, to intervene in infringement proceedings brought by the proprietor. It is not compulsory to register a licence in the register, but this is strongly advisable, since the licence has no effect with respect to third parties without notice unless it is recorded.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A typical licence agreement usually specifies the type of licence, its duration, the goods or services licensed and the territory covered. Provisions on quality control are not obligatory.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

EU trademark registrations or applications may be given as security or be the subject of rights in rem. Upon request of one or both parties and payment of the relevant fee, the security or right in rem will be entered in the register and published. If submitted by the pledgee(s) alone, the request must contain proof of the right in rem. A right in rem for an EU trademark is in its entirety and for the whole territory of the European Union. The right in rem is governed by national law and is treated the same as an equivalent national trademark registered in the member state in which the EU trademark proprietor or applicant has its seat or domicile, or in which the proprietor has an establishment; or if neither of the former is applicable, in Spain.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes. There is no prohibition on trademarks being protected by, for example, copyright or designs where they meet the relevant requirements (although there are certain prohibitions and the courts increasingly tend to reject as trademarks signs which have previously been protected by other IP rights).

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Infringements in the online sphere are also governed by the EU Trademark Regulation. The EU trademark courts have jurisdiction under the EU Trademark Regulation and relevant national law. Additionally, an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy or other relevant dispute resolution mechanism may be available in case of abusive, bad-faith domain registrations.

If a domain name is not protected as a registered trademark, remedies available under member states’ national laws apply (eg, unfair competition, passing-off).