Trademark rights have a territorial character, meaning that protection will be in force only in the country where the trademark is registered. If you want your mark to be protected in several EU countries, a good option is to apply for a European Union trade mark (EUTM), which is registered by the European Union Intellectual Property Office (EUIPO). A single EUTM registration results in a trademark being valid in all current and future EU Member States. In comparison, national trademark registrations will be protected only in those countries where they are registered.
Registering a EUTM may be cheaper than registering several national trademarks (depending on how many trademarks need to be registered). If you are certain that you will be actually using your trademark in several EU countries, we suggest registering a EUTM. For any business that is not purely local or national in the EU but extends, even if only potentially, to more than one EU Member State, the EUTM offers the most appropriate tool for brand protection in the EU. This is because:
- Costs are competitive (obtaining an EUTM is less expensive three national registrations, or, depending on country, even two)
- There is only one single registration procedure before one single office (EUIPO) with very few formalities, in a single language, and with the assistance of a single EU representative
- Protection extends across the EU, keeping options open: in a first-to-register system such as the EU, if you don’t register your mark, somebody else may, blocking market entry for your mark in the future. The EUTM avoids that problem once and for all for the entire EU
- The EUTM can be enforced across the EU in a single litigation (pan-European injunctions)
- Use in a single Member State will normally comply with the use requirement for the EUTM. National registrations (or IRs designating EU Member States) must be used in each country of registration to be maintained.
National registrations are recommended only where the business is (and is likely to remain) purely local or where an EUTM is not available due to third party rights or because of absolute grounds for refusal (lack of distinctiveness, functionality etc.) which do not apply in all Member States (for example for language reasons) or are handled less rigidly by national Trademark Offices.
A national trade mark gives protection only in the Member State in which it has been registered, while an EU trade mark gives its owner an exclusive right in all current and future EU Member States. It is entirely up to the applicants whether they want to obtain national, regional, EU-wide or international registration of their trade mark.
To sum up, the advantages of registering the trademark in Europe are:
- protection of your brand name in all EU member states with a single registration;
- development of your brand in EU and recognition of more than half a billion potential consumers;
- registration of the mark for 10 years with the possibility to renew the mark. No fees are paid within the first 10 years after the registration is completed!
- security presenting your brand in EU conferences, seminars and gatherings. Once you have your mark registered, you can freely disclose it with no fear somebody will use it.
- protection of your brand in EU e-commerce (such online markets as Amazon.co.uk/de/fr; eBay.co.uk/de/fr and similar);
- protection of your brand by the EU Customs (they will prevent counterfeiting goods entering the EU once you provide the Customs with the registration of your brand).
Cons to consider:
1) Unitary Right. An EUTM is “unitary” in nature. Therefore, if another trade mark proprietor has a national right in an EU country, they may be able to attack your EUTM in its entirety. However, in such circumstances, it is possible to “convert” your application to national trade mark applications in those countries where the prior right does not exist.
2) Possibility of Oppositions. EUTMs may be opposed in the same way as national applications, and there is a larger pool of potential opponents. Such parties may consider your trade mark to be similar to their own under their usual rules of comparison, which may be different from those from your country.
Unlike in the case of international trademark registrations, you do not need a national trademark registration as a basis to apply for a EUTM. However, you may use your national registration to claim priority, i.e. your EUTM will be afforded an earlier date of protection (priority date) which will be the same as your earlier national trademark filing date. Priority may be claimed during the 6 months following the first filing of the national trademark and it must be done on the same date when the EUTM application is filed. Therefore you need to decide quickly whether you want to claim priority for your national trademark registration for the purpose of your EUTM registration.
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. An EU trademark may be worth considering if a trademark is used in all or a substantial part of the EU.