History of the European Union Trade Mark and the EUIPO

Where would we be without the unitary European Union trade mark registration?

Before the creation of the European Union trade mark registration, if you wanted to protect your trade mark in multiple countries of the European Union, you had to apply to register the trade mark in each country.  Then, each application would be examined under the law and practice of that country and left open to opposition.  Appointing associates in each country to act before the local administrative offices was necessary.  Obtaining trade mark registration was arduous, administratively burdensome and very costly.  Then, if opposition or trade mark enforcement was required, the costs were sky-high.  It was also necessary to contend with multiple languages.

In 1994, the Office for Harmonisation in the Internal Market (OHIM), now the European Union Intellectual Property Office, opened with the express purpose of creating and managing a unified system which would allow registration of a trade mark to cover all of the, then 12, Member States of the European Union under a harmonised trade mark law and practice.  It was a long time coming as a “Convention of European Trademark Law” was first drafted thirty years earlier.

As the EU enlarged, so did the countries covered by an EU registration.  The original twelve members, Belgium, Denmark, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, and the United Kingdom, were joined in 1995 by Austria, Finland and Sweden, then in 2004 by Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia, and Slovenia, by Bulgaria and Romania in 2007 and then by Croatia in 2013.  This meant that instead of filing 26 individual national applications to obtain protection in each of the 28 Member States of the EU (Luxembourg, the Netherlands, and Belgium having joined together and created a single Benelux trade mark registration), a single application covering all 28 countries could be filed.

Of course, the United Kingdom left the European Union, and consequently, an EU registration no longer covers that country.  All trade mark registrations live on the EU register on 31st December 2020 were cloned onto the UK trade mark register so that EU registration holders did not lose these important rights.  It does mean, however, that where a single application to cover both the UK and Ireland/ EU used to suffice, it is now necessary to file two applications to obtain that same protection, increasing costs and adding to the burden of administration.

Increasing numbers of EU Trade Mark Registrations

The Trade Mark Register itself opened in 1996.  The very first trade mark registration is EU Trade Mark Registration No. 000000001, which is for the trade mark AIPPI and covers goods in Class 16 and services in Classes 41 and 42.  It is owned, rather appropriately, by the Association Internationale Pour La Protection de la Propriete Industrielle (The International Association for the Protection of Intellectual Property), a “…non-profit association dedicated to the development and improvement of laws for the protection of intellectual property”.  It is still alive almost 30 years after being filed.

Since then, until the end of April 2024, 2,872,214 EU trade mark applications have been filed with applicants of all nationalities taking advantage of this unitary trade mark system.  German applicants top the poll, having filed a whopping 380,000 applications over the years; the UK is ranked third with over 200,000 applications filed by UK-based businesses; and Ireland comes in at number 21, having filed just under 21,000 EU trade mark applications*

The EU trade mark registration is not only fantastic value for money, but it has also harmonised, for the most part, the disparate laws and regulations of 27 countries into a single system, thus simplifying the process of obtaining protection in all these countries and reducing the administrative burden involved.

Future of the EU Trade Mark

Of course, a unitary system also has disadvantages.  For example, the EUIPO can reject a trade mark application based on an earlier right or a ground only relevant in a single Member State.  The increase in Member States also increases the number of national trade mark rights that could be used to oppose an EU trade mark application.

With nine more countries currently undergoing the formal accession process to become members of the EU, including Albania, Bosnia and Herzegovina, Montenegro, North Macedonia, Serbia, Georgiq, Moldova, Ukraine, and, albeit the process is currently stalled, Turkey, the potential for objection and opposition against a trade mark application increases, but so too does the value of an EU trade mark registration.

Community Design Protection

It’s not just trade marks that can be protected by a single application in all Member States of the EU.  In 2003, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) filed the first Community Design application.  The application consisted of a design for the appearance of a calculator.  This design registration was not renewed and was allowed to lapse in 2013 however, since that first design application, nearly 100,000 applications a year have been filed.

Get in Touch

If you are interested in protecting your trade marks, i.e., those signs that identify your brand, or your designs in the European Union or elsewhere, why not contact us for a free initial 30-minute consultation?  You will be in safe hands with our experienced and knowledgeable trade mark and patent attorneys, who would be delighted to travel with you on your Intellectual Property journey.

* “EUIPO Statistics for European Union Trade Marks 1996-01 to 2024-04 Evolution”

 

Cherrie Stewart is a Director and European and Chartered Trade Mark Attorney