Trademarks from a European Market Perspective
With the introduction of the EU trademark (EUTM) in 1994, the European Union Intellectual Property office (the EUIPO) made it significantly easier to have your trademark protected in Europe as it covers all EU member states. One might think that they have Europe covered by choosing to go for an EUTM, and that it is also is an easy route to choose. However, it is not always that simple and there are some key aspects to consider when setting up a trademark strategy for the European market. Firstly, there are some key markets within Europe that are not part of EU, and therefore not covered by an EU registration with the EUIPO. The trademark systems also vary between different countries, so when applying for an EUTM, remember that you are involving 27 independent national trade mark regulations. With all this in mind, this article outlines some of the implications to consider as well as offering some insight into how you might approach them.
The application procedure for an EUTM in brief
If you want protection in several member states of the EU, you can apply for an EUTM from the EUIPO. This means that, through one application and one fee, your application covers 27 countries. Once an EU trademark has been filed, the Office examines the following: filing date, formalities, classification, priority and/or seniority where applicable, the regulations governing use of the mark for collective and certification marks, and absolute grounds for refusal, such as lack of distinctiveness in any of the languages spoken in the 27 countries. Applications that comply with the requirements of the regulation are accepted for publication and, from the date of publication, a three-month opposition period starts, where prior rights holders have the possibility to oppose the registration. It is important to note that the EUIPO will not perform a check for pre-existing registered rights. Instead, they have put the responsibility on prior rights holders, meaning that it is up to them to object if they find a trademark they deem similar to theirs, within the three months after publication. Consequently, a Trademark Watch service is incredibly important when a company has trademarks registered in Europe within their IP portfolio. The period between submitting the application to receiving a registered trademark is usually somewhere between 3-6 months, if nothing unforeseen occurs. One should be aware that if someone already has a trademark registered in any of the member states, it could hinder the progress of your registration if they decide to oppose. Conversely, the same is also true: If you apply for a local trademark within any EU country where there is a pre-existing right registered with the EUIPO, that could also hinder your registration. The systems work in parallel to one another.
What other jurisdictions in Europe should you consider filing in?
One obvious new jurisdiction is of course the UK since, following Brexit, they are no longer are a part of the EU, and therefore not a part of the EUIPO jurisdiction. Nevertheless, they remain a significant market in Europe. For EUTM's registered prior to the 1st of January 2021, a cloned UK right will have been created by the UKIPO, meaning that the registered trademark should still be protected in UK. Having said that, we would encourage you to conduct a full review of your IP Portfolio to ensure that all affected rights remain valid as intended. Trademark applications at the EUIPO that were still pending on the 1st of January 2021, will require re-filing in the UK if they are to receive the same application date. The possibility of re-filing remains open until 30th of September and Zacco can assist with this, as well as a wider portfolio review, if necessary.
Next country on the list to consider is Norway, which is not a part of the EU and therefore not party to the EUIPO. They are, however, part of the European Economic Area (EEA), meaning that they are part of the European internal market and conduct business throughout the EU. They also have a large shipping industry, thereby playing an integral role in both supply chains and logistics for products entering Europe.
The third country is Switzerland, placed in the middle of Europe and bordering some of Europe's largest consumer markets, such as Germany, France, Italy and Austria. Both its geographical position and the fact that Switzerland is considered one of the economic centres of Europe, makes it important to consider whether or not to protect your trademark in this country.
If you are only interested in protecting your trademark in Belgium, the Netherlands and/or Luxembourg, you can make an application to the Benelux Office of Intellectual Property (BOIP), the only regional-level IP office in the EU, for trademark protection in those three member states.
One last thing to consider is that many national intellectual property offices in Europe do not check for prior rights and cite them as hindrances when a new national trademark application is filed. This means that the responsibility to claim a trademark right, in some countries in Europe, lies on the trademark holder. As mentioned above, it is imperative that you monitor your existing rights to ensure future registrations do not infringe on your intellectual property anywhere in Europe. This applies to multiple countries, but a particular focus should be on the most significant markets in Europe such as Germany, France, Spain, Denmark, Portugal, Benelux, Italy and Ireland, where no check for prior rights is performed by any of the national intellectual property offices.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.