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EU trademark

An EU trademark offers protection in all (currently 28) countries of the European Union. EU trademarks are registered by the European Union Intellectual Property Office (EUIPO) in Alicante, Spain.

One advantage of the EU trademark is that you can obtain protection in a large area for a (relatively) small fee. The fees are EUR 850 for an online application for one class and EUR 1,000 for a paper application. 

Although a market of nearly 500 million inhabitants may sound attractive, it can also be a disadvantage at the same time. Rights, after all, do not generally come without obligations, which increase proportionally as the territorial rights expand. The rule for a EU trademark is ‘all or nothing’, and protection in an area where you do not operate can entail risks – not only during the registration phase, but also when maintaining and enforcing the rights.

Registration
EUIPO must evaluate a trademark in all EU languages, and if it turns out to be (for example) descriptive in one language, the application will be rejected. This is because an EU trademark must be distinctive in all EU countries, as determined by the European Court of Justice (ECJ) in the case Storck/OHMI (C- 25-05 P). Moreover, an objection from a third party in any EU country can cause the EU trademark to be rejected (in opposition proceedings) or later deregistered (in cancellation proceedings). As regards EU trademarks, the percentage of opposition proceedings alone is over 15%. The risk that the trademark will either not be registered, or registered only after complicated and often costly procedures, must therefore be considered.

Although that risk is reduced by the fact that an EU trademark can be converted into national applications in such cases, the process may be rather complicated and costly, particularly when there are numerous countries involved. What is more, the protection of your mark would then be scattered across individual applications in different countries, which increases the difficulty of managing the trademark portfolio as well as the cost of renewing the individual registrations. These disadvantages can be avoided by having an EU trademark ‘built into’ an International trademark.

Maintenance (genuine use)
Once a trademark has been registered, it must be used. A trademark that has not been genuinely used within five years of its registration may be declared void.

In the case ONEL/OMEL (C-149/11) the ECJ stated that it is reasonable to expect that an EU trademark should – because it enjoys more extensive territorial protection than a national trademark – be used in a larger area than the territory of a single Member State. The ECJ considered:

“A Community trademark 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 trademark and the territorial extent and the scale of the use as well as its frequency and regularity.”

When opting for a Community trademark the bar for the maintenance of the right is thus clearly higher than when opting for a national trademark. 

Enforcement
Lastly, enforcement of a right (which is ultimately the reason why you want to protect your trademark) is more problematic in such a large territory. If you take out trademark protection for an area much larger than your operating market, the likelihood of disputes also increases accordingly. This sword is also double-edged: on the one hand, if a prior trademark or trade name exists anywhere in the EU that is the same as or confusingly similar to yours, this can have fatal consequences for your EU trademark. On the other hand, if another company starts using the same or a confusingly similar trademark at a later stage within the EU (even in an area in which you do not operate or have no interest), it is advisable for you to enforce your EU trademark. If you tolerate a later trademark for more than five years, you can no longer take action against it even if the other party subsequently does start to impinge on your territory. Therefore, where a EU trademark is concerned, both research into prior rights as well as monitoring and taking action against later ones is a very important and often costly affair.

EU trademark: conclusion
An EU trademark provides protection in the entire EU for a relatively small fee. However, the risk of the protection not being granted, or being granted only after lengthy, complicated and often costly procedures, should not be underestimated. Furthermore, the choice for an EU trademark can bring some disadvantages regarding maintenance and enforcement of the right.

If a trademark is used within the entire EU (or in a considerable part thereof), the EU trade mark may be a good option. However, there are other options, such as an International Trademark or an EU trade mark via an International application, which seem to offer more opportunities and security, especially if you do not operate in the EU (or in a considerable part thereof) or if you also operate outside of the EU.

Our Information Centre will be happy to inform you about the proper procedure.