Registration and use

Ownership of marks

Who may apply for registration?

Any natural or legal person, including authorities established under public law, may register an European Union trademark (EUTM).

Special rules apply for the entitlement to register collective and certification marks.

Scope of trademark

What may and may not be protected and registered as a trademark?

Signs that may be protected and registered as a trademark

The EUIPO recognises many types of mark (word marks, including slogans, personal names, letters and numerals and figurative marks, as well as non-traditional marks such as shape marks, pattern marks, colours per se, colour combinations, holograms, motion marks, multimedia marks, position marks and other marks, such as the layout of a retail store) under two main conditions set out in the EUTMR:

  • the sign must be capable of being reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner; and
  • the sign must be capable of distinguishing the goods or services of one undertaking from those of others.

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

EU certification marks 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.

Signs that may not be registered as a trademark

The EUTM legislation distinguishes between absolute and relative grounds for refusal.

Any one of the absolute grounds listed in article 7(1) of the EUTMR is sufficient to refuse an EUTM application, as follows:

  • signs that are incapable of being represented on the EU Trademark Register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor;
  • 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 that 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;
  • 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 that:
    • result from the nature of the goods themselves;
    • are necessary to obtain a technical result; or
    • give substantial value to the goods.

Acquired distinctiveness cannot overcome these three grounds for refusal.

  • trademarks that are contrary to public policy or to accepted principles of morality;
  • deceptive trademarks ‒ that is, trademarks that are of such a nature as to deceive the public;
  • trademarks which may be refused pursuant to article 6-ter of the Paris Convention ‒ that is, signs which have not been authorised by the competent authorities;
  • badges, emblems or escutcheons of particular public interest (other than those covered by article 6-ter of the Paris Convention), unless the competent authority has consented to their use;
  • under certain conditions, designations of origin and geographical indications;
  • under certain conditions, traditional terms for wine:
    • traditional specialities guaranteed, which highlight the traditional characteristics of a product in either its production process or composition; and
    • plant variety rights that 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.

The absolute grounds for refusal (except for lack of distinctive character, descriptiveness and common use) may be overcome if the trademark applied for has acquired distinctive character as a consequence of the use that has been made of it.

Each of the above grounds of non-registrability is sufficient even where the ground applies only in a part of the European Union, including a single member state.

On the other hand, article 8 of the EUTMR provides for relative grounds for refusal. Upon successful opposition by a third party, an EUTM application will not be registered based on earlier rights invoked in relation to the following relative grounds listed in article 8 of the EUTMR:

  • identity between both the goods or services and the marks, where likelihood of confusion is presumed and need not be proven;
  • 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 European Union or national trademark of an EU member state or Benelux, an international registration with the same effect or a well-known mark pursuant to article 6-bis of the Paris Convention);
  • unauthorised filing of the proprietor’s mark as an EUTM 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), unless the agent or representative justifies his or her action;
  • 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, provided that the proprietor has the right to prohibit the use of the later trademark; and
  • 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. The earlier mark with a reputation must be an EUTM or national trademark of an EU member state (or Benelux), or an international registration with the same effect.
Unregistered trademarks

Can trademark rights be established without registration?

At EU level, no protection is available to unregistered trademarks. The ninth recital in the preamble to the EUTMR specifically states that the rights in an EUTM '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.

Further, 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 EUIPO maintains a list of recognised unregistered rights throughout the member states in its guidelines.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

The EUTMR grants no express benefit to any trademark registered outside the European Union, irrespective of whether it is famous or not. However, foreign registrations are relevant for the assessment of unauthorised filing by an agent.

The benefits of registration

What are the benefits of registration?

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

The owner of a registered EUTM has the right to prevent all unauthorised third parties from using, in the course of trade:

  • an identical sign 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 EUTM 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 EUTM.

Owners of EUTMs 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.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The following information and documentation must be submitted:

  • a request for registration of an EUTM (if filed on an EUIPO form, no express request is necessary);
  • information to identify the applicant;
  • a representation of the trademark;
  • a list of goods and services, listed by international class; and
  • the signature of the applicant or the representative (if not filed electronically).

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.

An EUTM can be represented in any appropriate form using generally available technology, as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner so as to enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor. If the EUTM application is not a word mark, the mark type must be indicated. For shape marks, a graphic reproduction of the shape - including computer-generated imaging - or a photographic reproduction must be submitted. For sound marks, an audio file reproducing the sound or an accurate representation of the sound in musical notation should be submitted. For colour marks per se, a reproduction of the colour and an indication of that colour by reference to a generally recognised colour code should be submitted. For colour combinations, the reproduction must show the systematic arrangement of the colour combination in a uniform and predetermined manner with a reference to generally recognised colour codes. A description detailing the systematic arrangement of the colours is also highly recommended. Further, according to EU case law, smell marks do not comply with the representation requirement. Electronic filing is available.

The EUIPO does not require trademark searches before the filing of an EUTM application. However, the electronic filing process allows applicants to conduct, for free, a search of earlier potentially conflicting EUTMs or trademarks protected in individual member states. The results of this search are not binding and are for information purposes only.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The registration proceeding typically takes under four months, assuming no objections or oppositions.

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 (for 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 or services), €50 (for a second class of goods or services) and €150 (for each additional class of goods or services); and
  • 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).

The rights conferred by an EUTM 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 EUTM application.

The estimated time and costs of the registration proceeding could be increased owing to:

  • formal requirements issued by the EUIPO;
  • a provisional rejection on absolute grounds; or
  • an opposition by a third party.
Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Goods and services in respect of which trademark registration is applied for shall be classified in conformity with the system of classification established by the Nice Classification.

The goods and services for which the protection of the trademark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.

The general indications included in the heading of the Nice Classification or other general terms may be used, provided that they comply with the requirement of clarity and precision. Some of such terms are, however, not considered to comply with that requirement.

Applications that do not comply with the requirement of clarity and precision will be rejected by the Office, where the applicant does not suggest an acceptable wording within the period set by the Office to that effect.

Multi-class applications are available upon a payment of €50 for a second class of goods or services and €150 for each subsequent class.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The EUIPO examines an EUTM application for formalities, classification, priority and seniority, compliance with the regulations governing use of the mark, in the case of collective and certification 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.

The EUIPO does not examine for potential conflicts with other trademarks ex officio. However, it does carry out an EU search. An EUTM applicant who 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. The result of such search reports is for informational purposes only.

Citations of third-party trademarks are not made by the EUIPO.

Applicants may respond to trademark office rejections. If the EUIPO detects one or more absolute grounds for refusal, it sends an official communication to the applicant, who has two months to file a response. The applicant may ask for an initial two-month extension of time, which will normally be granted automatically. Subsequent extensions must be justified.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark or service does not have to be claimed before registration is granted or issued.

Proof does not need to be submitted, except where EUTMs, which have been registered for more than five years, are invoked in opposition or cancellation proceedings and 'proof of use' is requested or where a revocation action is filed against the EUTM.

The EUTMR provides for priority under the Paris Convention and seniority.

Priority may be claimed of one or more previous trademark applications filed in or in respect of a state party to the Paris Convention, a member of the WTO, or a state for which the EU Commission has confirmed reciprocity, provided that the priority is claimed for the same trademark in respect of goods or services that are identical with or contained within those for which the application has been filed and the EUTM application is filed within the six months from the date of filing of the first application. The right of priority has the effect that the date of priority shall count as the date of filing of the EUTM application for the purposes of establishing which rights take precedence.

Seniority may be claimed by proprietors of an EU registered trademark or applicants of an EUTM that already hold a national or international trademark registration with effect in one or several member states for identical goods or services, within two months of the filing of the EUTM application. Seniority has the sole effect under that, where the proprietor of the EUTM surrenders the earlier trademark or allows it to lapse, the proprietor will be deemed to continue to have the same rights as he or she would have had if the earlier trademark had continued to be registered, and is subject to the validity of the earlier trademark the seniority of which is claimed.

An EUTM benefits from a five-year use period. After that time, the trademark may be revoked upon request of a third party if it is not proven that the trademark has been put to genuine use within the preceding period of five years.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

EUTM owners can indicate trademark registration by placing the symbol ® or indicating the registration number next to the trademark. marking is not mandatory.

The indication that the trademark is registered may deter potential infringements; it is also helpful in the event of any legal action. Absence of marking does not, however, have any impact on remedies available in infringing proceedings.

Appealing a denied application

Is there an appeal process if the application is denied?

Any decision partially or entirely refusing, revoking or invalidating an EUTM application or registration is appealable before the EUIPO. 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 before the EU General Court and then before the CJEU.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Applications are published for opposition and a third party may oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration.

Opposition

A third party, based on 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 EUTM 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 EUTM applicant.

When the opposition is found admissible, there is a 'cooling-off' period (two months, extendible to 24 months upon request of the parties) designed to encourage amicable settlement. The opponent is given two months after the expiry of the cooling-off period to substantiate its earlier rights and submit facts, evidence or arguments in support of its opposition, following which the EUTM 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).

Oppositions cannot be based on absolute grounds for refusal. However, in such a case, any third party (no legal interest need be shown) may submit to the Office 'third party' observations, explaining on which grounds, the trademark should not be registered ex officio.

Revocation and invalidity

Revocation 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 EUTM. The EUTM owner has an extendible period of two months to prove that it has put its EUTM to genuine use within the territory of the European Union during the relevant period, 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 EUTM is registered, it will be revoked for the remainder. The burden rests with the trademark owner.

An EUTM can further be invalidated (totally or partially) on the basis of absolute grounds, bad faith, relative grounds 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). An invalidation based on absolute grounds may not be declared, if the proprietor of the trademark proves that the mark has acquired distinctiveness through use in relation to the goods and services for which it was registered before the filing date or the invalidity action.

The burden of proving the invalidity grounds rests with the invalidity applicant, and an EU trademark has a presumption of validity unless and until it is invalidated.

Both proceedings are initiated through an application for revocation or for a declaration of invalidity and payment of a fee of €630.

Costs depend on numerous factors, such as use, reputation and settlement negotiations, etc. However, straightforward opposition matters may range from €500 to €3,000 and cancellation actions from €1,000 to €5,000.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The term of registration of an EUTM 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). The request must be submitted in one of the five working languages of the EUIPO. The extent of the renewal is deemed total by default (otherwise it must be specified).

Trademark use is not required for its maintenance. Nevertheless, revocation proceedings may be filed by third parties. In such a case, use of the mark can be proven by any means. In general, the place of use, the duration of use, the extent of use and the nature of use are relevant factors to determine if the mark has been put to use by its proprietor.

Surrender

What is the procedure for surrendering a trademark registration?

An EUTM registration can be totally or partially 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. The validity of a surrender of an EUTM that is declared subsequent to the filing of an application for revocation or invalidity is 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 is 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.

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).

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 EUTMR. The EU trademark courts have jurisdiction under the EUTMR 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.