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Rights and protection
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.
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.
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.
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