Useful information when protecting trademark rights in the European Union (EU) is presented below.
It is our hope that our clients will find this page helpful in protecting their intellectual property overseas.
< Average length of examinations > (as of March 2018)
From filing to registration: approx. 4-6 months (if no opposition is filed. See '2. Trademark Rights in the EU' below).
2. Trademark Rights in the EU
(1) Countries in which rights are effective
The current 28 member states of the European Union are treated as a single region, and a single application can obtain a trademark right that is valid throughout this entire region. This is the European Union Trade Mark (EUTM). It was previously known as the Community Trademark (CTM) until the name was changed in March 2016.
As of March 2018 the member states of the EU are as follows: Belgium, Bulgaria, Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxemburg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and Great Britain.
When a new member state joins the EU, existing trademark rights will automatically be extended to be effective in the new state, without any additional procedures or fees required. However, when Great Britain leaves the EU, all EU trademark rights will cease to be effective in Great Britain.
Also, as the 28 member states are treated as a single region, it is not possible to limit the right to certain member states.
(2) From Application to Registration
The procedures for registering an EUTM are divided into three main examination stages.
(a) Formality examination and examination as to absolute grounds for refusal
- A formality examination looks for whether there are errors in the filing documents, and whether or not the classes of designated goods and services are appropriate (the goods and services for which a right is sought should be indicated clearly and accurately).
- An examination as to absolute grounds for refusal looks for whether there are reasons why the mark applied for cannot itself be registered, for example if it has no distinctiveness.
A notable feature of EUTM applications is that they are not usually examined as to relative grounds for refusal (comparison with the prior trademarks of third parties to determine whether or not they are identical or similar). Examination as to relative grounds for refusal is only carried out when a third party lodges an opposition.
Applications are published after the examination procedure described in (a) above is complete.
(c) Period for oppositions
Third parties that hold prior trademarks which are identical or similar to trademarks published under
(b) above may lodge oppositions within three months from the date of publication. In a case where the outcome of opposition proceedings is positive for the applicant, or where no opposition has been filed, the EU trademark will be registered.