It is clear that any company which intends to trade in the European Union should consider the possibility of obtaining a European Union Trade Mark (EUTM) registration. EUTMs are unitary in character and a single registration covers all the member States of the European Union.
While a valid prior national right in any of the EU member States may be invoked in opposition proceedings to prevent the registration of a subsequent conflicting EUTM, due to the cost involved in conducting a pan European Trade Mark search, EUTM applicants frequently opt to limit the initial pre-filing search to the European Union Trade Marks database.
Once a European Union registration has been obtained, the search can be extended to identify any potential conflicting national and international rights enforceable in the specific EU countries where the trade mark is intended for use.
Requirements for Filing a Trade Mark Application
- Particulars of the trade mark to be registered. If the trade mark consists of, or incorporates, a figurative element, we will require at least one representation of the trade mark. This may be submitted in electronic format, together with details of any colours featured in the trade mark.
- The full name, address and nationality of the applicant
- Particulars of the goods and /or services for which registration is required
- If priority is claimed, a copy of the basic application will not be required if particulars of the basic application or registration are available online by accessing the relevant database National Trade Mark database.
- A Power of Attorney is not required
Examination of a Trade Mark Application
Any sign that is capable of being represented graphically and which is capable of distinguishing goods or services of one undertaking from those of another will qualify for registration as an EUTM.
EUTM applications are all examined on absolute grounds and registration will be refused if the trade mark fails to satisfy the relevant criteria for registration. EUTM applications are not subject to a relative grounds examination.
Registration will be refused if the trade mark:
- is devoid of any distinctive character;
- exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
- has become customary in the current language or in the bona fide and established practices of the trade;
- consists exclusively of signs or indications which have become customary in the current language or in the bone fide and established practices of the trade
- consists exclusively of the shape of goods that results from the nature of the goods themselves
- consists exclusively of the shape of goods that is necessary to obtain a technical result
- consists exclusively of a shape that gives substantial value to the goods
- is contrary to public policy or to accepted principles of morality;
- is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
Other absolute grounds for refusal may relate to some official emblems.
Registration of a Trade Mark
Following the expiration of the opposition period or the final rejection of any opposition submitted during that period, the Certificate of Registration will be issued and the registration will remain in force for 10 years from the filing date. EUTMs may all be renewed for a further 10 years.