An EU trademark gives you protection in all EU countries (currently 27). You can apply for registration of an EU trademark at the European Union Intellectual Property Office (EUIPO), which is located in Alicante, Spain.
Application for an EU trademark is proportionally cheaper than for a national trademark, and so can be an attractive option if you are active in a large part of the EU.
There is a greater risk of your trademark application being refused or of opposition being filed in the case of an EU trademark because it covers a larger area. This can lead to your trademark not being registered. The costs for the EU trademark application are not refunded.
All or nothing
The right to an EU trademark is granted based on the 'all or nothing' principle. This means that when you apply for an EU trademark, a search is done in all 27 EU countries to check that your trademark satisfies the legal provisions for registration. Among other things, this means that your trademark must be distinctive and not descriptive in all these countries. EUIPO must assess a trademark application in all EU languages. If it appears to be descriptive in one language, for example, the registration is refused for the whole of the EU. An objection to your application can also be lodged in any EU country (opposition is filed). This can result in long and complicated legal proceedings. In this case, this risk is lessened somewhat by the fact that an EU trademark can be converted into separate national applications. Conversion into national applications can, however, quickly become quite complicated and expensive, especially when multiple countries are concerned. Furthermore, protection is also fragmented over all the separate applications in different countries, which makes managing your trademarks portfolio more difficult, and the renewal of all the separate registrations much more expensive. It is wise to thoroughly appraise in advance the probability of your trademark actually being registered. An IP professional can assist you in this regard.
How does it work?
You can apply for an EU trademark directly online to EUIPO. In light of the greater risk of refusal or opposition, it can however be useful to seek assistance from an IP professional.
Impact of Brexit: EU trademarks and international applications and registrations designating the EU are subject to measures put in place since 31 December 2020 that ensure trademark owners do not lose their existing rights. In short, this means that registered trademarks will be automatically converted and that, for ongoing applications, an application can be filed in the UK within the nine months following the end of the transition period, i.e. within nine months from 31 December 2020, and the priority date will be retained. More information is available from the websites of EUIPO and UKIPO.
How much does it cost?
An application for an EU trademark is possible from 850 euro for one category (class). You can find the current fees on the EUIPO website. For more information, contact the EUIPO Information Centre in Spain (+34 965 139 100). An IP professional could also help you draw up a complete costing.
The fees for an EU trademark application are relatively low, but the fees for maintaining your registered trademark can work out much higher. After all, you need to monitor trademark applications/registrations and take action against infringement in all 27 countries at the same time. It is best to take advice from an IP professional on this aspect in advance.
Claiming seniority
In the case of an EU trademark, when filing an application, or possibly later, you can claim seniority based on earlier national trademarks. In such a case, you must already have registered trademarks in an EU member state. By claiming the seniority of these earlier national or Benelux trademark registrations for your EU trademark, if the national or Benelux trademark later lapses, the associated rights in the relevant EU country remain intact.
It is a proviso that the trademark, trademark owner, and goods and services be identical. EUIPO checks whether that is indeed the case.
Consequence
If the EU trademark owner surrenders his national trademark, his EU trademark right will nevertheless be deemed to retain the same rights in the country where the expired national trademark was valid.
Benefit
The trademark owner can allow his national right to expire by not renewing the trademark registration. If so, there will be no more need to pay any more national fees, which results in a saving. If the EU trademark is lost (e.g. as a result of revocation proceedings), an owner can fall back on his national right(s) by converting the EU trademark into separate national applications.
An IP professional can provide you with further information about seniority.
Maintenance and protection of EU trademarks
Just like a Benelux trademark, an EU trademark also requires maintenance. Among other things, this means that you must use your EU trademark, keep it up to date, and renew it on time. More about maintaining your trademark
In general, the same maintenance principles apply for EU trademarks and Benelux trademarks. There are, however, also some extra points that require attention when using and monitoring an EU trademark:
Use
If you have a registered trademark, you must use it. A trademark that has not been used within five years of registration can be declared lapsed. EU trademarks enjoy wider territorial protection than national trademarks, so there is a reasonable expectation that they will be used over a larger geographical area. If you do not make genuine use of your trademark within the EU, another party may take legal action to have it declared lapsed, with the possible consequence that you lose your right to the EU trademark. So make sure you can demonstrate that your trademark is being used, e.g. by archiving evidence such as advertising brochures, etc.
Monitoring
Remember that with an EU trademark, you need to be monitor your trademark rights are not being infringed in any EU country, and if necessary to take defensive action. Not only does that cost a lot of time, it can also be expensive. The EU is a large area, after all, so the likelihood of disputes is relatively large. It is, therefore, important always to monitor which other trademarks are active within the EU and to act if necessary when someone infringes your rights. Bearing this in mind, think carefully about whether you really need an EU trademark, or whether a national or international trademark might be a better option. An IP professional can advise you on the optimum protection for your trademark.
EU trademark or international trademark?
The main differences between an EU trademark and an international trademark:
- You run a greater risk with an EU application than an application for an international trademark. The principle of 'all or nothing' applies when it comes to an EU trademark application. In other words, either you receive protection in all 28 EU countries in one go or, if your trademark is found not to be distinctive and/or to be descriptive in one or more of those countries, your application will be refused in all 28. Opposition to your application can also be filed in one or more countries. In both cases, the application process will then have been for nothing and the costs incurred not refunded. This principle does not apply for an international application; your application is examined separately in each of the countries. This means, for example, that if your application is refused or opposition is filed in one country, it might still be possible to receive protection in the other countries named in your application. It is however possible to mitigate the risk by 'embedding' an EU trademark in an international registration (see information below).
- Unlike the application for an international trademark registration, you do not need any basis to apply for an EU trademark. In other words, you do not have to apply for a national trademark registration before applying for an EU trademark.
Include EU trademark in an international application
By 'embedding' an EU trademark in an international application, you can avoid the downside of the 'all or nothing' principle of the EU trademark.
All or nothing
The 'all or nothing' principle means that EUIPO must refuse your application for an EU trademark for the whole of the EU if it is refused in any one of the EU countries. In such a case, your trademark cannot be registered. For example, your application for an EU trademark is refused because the trademark is descriptive in French. As a result, in line with the 'all or nothing' principle, the EU trademark cannot be registered in the EU as a whole.
You do, however, have the option of converting your application into individual national applications in separate EU countries, e.g. only in EU countries where French is not spoken. The upshot of this is that you need to pay for each of these individual applications and maintain the administration for them separately. Whereas if you have included the EU trademark in an international application, conversion for the desired EU countries can be done much more cheaply and more easily within that international application. This saves you time and a lot of administrative hassle.
How does it work?
- You file an international application to BOIP online, based on your application for a Benelux trademark registration;
- You select 'EU' in the country selection (and any other country outside the EU where you operate);
- BOIP checks that your international application is compliant and that it is identical to your Benelux initial application. We then forward your application to WIPO (World Intellectual Property Organisation), the authority that manages the international trademarks register;
- WIPO checks that your application meets the formal requirements, e.g. that the goods and services are clearly described and the application has been paid for. If all the formalities are in order, your application is entered in the international trademarks register and published in the WIPO Gazette of International Marks. WIPO then notifies the relevant authorities in the countries for which you have filed your application. These authorities will each examine your application separately. Depending on the outcome, your trademark is:
- registered for all goods and services, or;
- registered for some of the goods and services, or;
- refused completely.
BOIP has no influence on this process and has no knowledge of the status of your application. You can monitor the process yourself via the WIPO Madrid Monitor.
