An EU trademark gives protection in the entire European Union by means of only one application. The European Union consists of the following countries:
Austria Benelux Bulgaria Croatia Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Ireland Italy Latvia Lithuania Malta Poland Portugal Rumania Slovak Republic Slovenia Spain Sweden United Kingdom
The application will be filed with the OHIM (Office for Harmonisation in the Internal Market) in Spain. The procedure is as follows:
formal grounds (a.o. classification)
older applications and registrations
(EU trademarks as well as national trademarks – NB. France, Germany and Italy do not provide search reports – a separate search for these countries is advisable)
no grounds for refusal
Review absolute grounds
does the trademark have distinguishing characteristics, is the trademark a generic name, or a common designation, is it misleading, etc. grounds for refusal
request and notification to holders of older resembling EU trademark applications or registrations
if there is no (successful) opposition
If an opposition is filed, the following rules will apply.
In this stage the following rights can withhold the registration of a EU trademark application:
- older EU trademarks
- older national or international trademark registrations (WIPO) which designate one ormore of the countries of the European Union
- famous (!) trademarks (as mentioned in the Treaty of Paris, art. 6a)
- older de facto or rights based on use which, according to the national law of an Union country, give the user the right to forbid the use of a younger trademark, like trade names or so-called common law rights)
In this stage the OHIM does judge on conflicts in respect of these rights. At this point we will not mention all the criteria which are employed by the OHIM.
Important is that the opponent has to prove genuine use in the last five years, which means actual use of the trademark.
In the opposition procedure one can assume that a EU trademark application will always be refused if the trademark and its goods and/or services are identical to older trademarks of the opponent.
This emphasises the importance of a preliminary search for national registrations
NB. Also after the opposition period action can be taken against a EU trademark application by the owner of an older national right.
However this will not be possible in case the owner has consciously tolerated the use of your trademark in his area for five years.
The registration has a validity of ten years counting from the date of registration. The registration can be renewed indefinitely, every time for a period of ten years and payment of a renewal fee.
- a Power of Attorney, which will be sent to you
- incaseofalogo:oneexampleofyourstationery,label,brochure,etc.onwhichthetrademark is shown; possibly in digital format like *.bmp *.gif or *.jpg.