An EU trademark offers protection for all (currently 28) countries of the European Union by means of a single application. EU trademarks are registered by the European Union International Property Office (EUIPO), established in Alicante, Spain.
The advantage of an EU trademark is that protection can be obtained for a large area for a relatively modest fee. A fee of 850 euro is charged for an online registration for a single class and 1,000 euro for a paper application.
There is, however, a downside. Rights generally come with obligations, and a right covering such a large territory brings greater obligations. An EU trademark is subject to the 'all or nothing' principle. A successful objection in just one country is lethal to protection in all other EU countries.
For that reason, applying for protection for a part of the EU where your client does not operate directly can expose him up to additional risks. This applies not only to the registration phase, but also, or indeed especially, to maintenance and enforcement of the right.
EUIPO must assess a trademark in all EU languages. If the trademark proves to be descriptive in one language, for example, the application will be refused. An EU trademark must be distinctive in all EU countries, as confirmed by the Court of Justice of the European Union (CJEU, case C-25/05). Furthermore, an objection from any EU country could result in the entire EU trademark being refused (as a result of an opposition proceeding) or cancelled at a later date (as a result of an action for revocation). The percentage of EU trademarks against which opposition is filed exceeds fifteen per cent. You should therefore not underestimate the risk of the trademark not being registered, or only being registered after lengthy, complex and often expensive legal proceedings.
This risk can be lessened somewhat by converting an EU trademark into separate national applications in such cases. Conversion into national applications can, however, quickly becomes quite complicated and expensive, especially when multiple countries are concerned. Furthermore, protection is also fragmented over the separate applications in different countries, which makes managing your trademarks portfolio more difficult, and renewal of all the separate registrations much more expensive. You can avoid these pitfalls by 'embedding' an EU trademark in an international trademark.
Once a trademark has been registered, it must be used. If it can be shown that a trademark has not been used within five years of registration, it may be declared lapsed.
In the case of ONEL/OMEL (C-149/11), the Court of Justice of the European Union (CJEU) ruled that since an EU trademark enjoys broader protection territorially, it is reasonable to expect it to be used in a larger geographical area than a national trademark. The Court of Justice ruled as follows:
“A Community trade mark is put to 'genuine use' within the meaning of Article 15(1) of Regulation No. 207/2009 when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it. It is for the referring court to assess whether the conditions are met in the main proceedings, taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the se as well as its frequency and regularity.”
The requirements as regards maintenance/usage are thus stricter for an EU trademark than for a national trademark.
Enforcement (action against infringement)
The reason for protecting a trademark is to be able to enforce the resulting rights. In much the same way as maintaining a right, enforcing a right is more difficult in a large area.
If you choose to protect a trademark in a much larger area than that in which your client actually operates, you increase the probability of disputes arising. This works two ways:
- If an older trademark or trade name exists somewhere in the EU, and is identical or similar to your client's trademark, this could have fatal implications for your client's EU trademark as a whole;
- If another company starts to use an identical or similar trademark in the EU at a later date, even if it is in an area in which your client does not operate or has no interests, it is advisable for you to enforce the EU trademark. This is because if you have tolerated a more recent trademark for longer than five years, you can no longer take action against it, if, for example, the other party's activities later begin to encroach on those of your client.
Checking whether older trademarks are protected and monitoring and taking action against more recent ones are therefore very important tasks in the case of an EU trademark, and are often a costly business.
EU trademark: conclusion
An EU trademark provides protection throughout the EU at relatively little cost. However, you should not underestimate the risk of the trademark ultimately not being registered, or only being registered after lengthy, complex and often expensive legal proceedings. There can also be downsides to maintaining and enforcing the rights afforded by an EU trademark.
An EU trademark may be worth considering if a trademark is used in all or a substantial part of the EU. There are, however, other options, such as an international trademark or an EU trademark by means of an international application, which may offer more options and certainty, especially if your client does not operate in the EU, or in a substantial part of it, or indeed if he also operates outside the EU.