European trademarks are registered rights which have unitary effect throughout all of the 27 countries of the European Union. EU registered trademarks cannot be subdivided, assigned or otherwise divided on a state by state basis, but only as a European Union wide right. However, they can be licensed on an individual national basis. Since their inception in 1996, European trademarks have been extremely successful, and are now the first choice for protection of marks in Europe.
What can be protected?
Any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings can be registered as EU registered trademarks. The majority of EU registered trademarks are product brand names, and company names. However, there are also registrations for colours, smells, sounds, and three-dimensional shapes.
What is excluded from protection? Trademarks cannot be registered for the following:
– signs which are not capable of distinguishing the goods or services of one undertaking from those of another;
– trademarks which are devoid of any distinctive character;
– trademarks which consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, signs which consist exclusively of the shape or another characteristic, which results from the nature of the goods themselves;
– signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result;
– signs which consist exclusively of the shape, or another characteristic, which gives substantial value to the goods. This means that items such as an engine camshaft, or a set of saw tooth blades would not be registrable as EU trade marks. However, articles such as packaging, bottles and the like are registrable as trademarks.
Scope of rights
Trademarks are registered in respect of a description of goods and services. One proprietor can register a trade mark for some goods, whilst another proprietor can register the same trademark for other goods, without the two registrations necessarily conflicting each other, provided the goods of the first registration are not identical or similar to the goods of the second registration. Even where the same mark is registered by two different owners for the same goods or services, these can still coexist on the EU trade marks register if there is consent between the two owners.
Duration
EU registered trademarks are perpetual rights, which means they have no maximum term or scheduled expiry. However to maintain an EU trade mark requires payment of an official maintenance fee every 10 years. Further, any mark which has not been used within the European Union for a continuous period of 5 years or more is vulnerable to be revoked upon application by any third party, on the grounds of non-use, even if the maintenance fees are paid up to date. Use of a trade mark must be made in the European Union, in order to maintain a valid registration.
Application procedure
A pre-filing search is always recommended to see if the mark is available for registration and use. However such a search is not essential in every case. The search can identify whether there are any third party rights which could cause problems in using the mark, and whether there will be any problems in registering the mark. Single application relates to an individual mark to be registered. Each application can specify as many goods and services as required. Goods and services fall into different classifications according to an international classification system. In general, the specification of goods and services should include as many goods as you are using the mark on, or intend to use the mark on. Goods cannot be added to the specification after filing, although individual descriptions of goods can be deleted from the application. After filing the application, the EU intellectual property office examines the mark for intrinsic registrability, to ensure that it is capable of distinguishing the goods and services of the applicant from those of other undertakings. Assuming examination by the office for intrinsic registrability is successful, as is the case with the majority of EU trade mark applications, the mark is laid open to opposition from third parties for a 3 month period. If no oppositions are received, the mark will proceed through to registration within a few weeks thereafter. However if an opposition is received, the application then goes into the official opposition procedure.