IPR easily – EU Trademark (part 9)

EU Trademark

= A system spanning the European Union for the registration of trademarks at the EU Trademark Office, known as the EUIPO.

How does the EU Trademark system work?

To apply for an EU trademark, an applicant must submit an application to the EUIPO. The EUIPO evaluates whether the trademark is distinct enough. Distinctiveness implies that the trademark should not directly describe the goods or services for which protection is sought. Instead, it must stand out from generic terms and abbreviations commonly used in the relevant industry. If a trademark fails to meet this criterion, the EUIPO will deny the application. However, before rejecting an application, the EUIPO issues a Notification of Refusal, giving the applicant an opportunity to contest the grounds for refusal with counterarguments.

Applicants must also specify the goods and services for which they seek trademark protection.

The EUIPO does not assess the similarity of the trademark to any previous registrations that may be identical or similar and registered for related goods or services. The responsibility to identify and challenge similar trademarks falls to the owners of existing trademarks. They must monitor the EUIPO’s publication of new trademarks and, if they find a potentially infringing trademark, file an opposition within three months after its publication in the EUIPO database. Oppositions can be filed by owners of earlier EU trademark registrations or national trademark registrations within any EU Member State. Additionally, any party can oppose a trademark on the basis of insufficient distinctiveness.

Terms

Distinctiveness: A trademark must distinguish the applicant’s goods and services from those of others and should not merely describe or be a generic term for the goods/services applied for. It is a fundamental requirement for trademark registration.

Classification: A classification system to identify the goods and/or services for which trademark protection is sought.

Office Action: A notification of refusal from the EUIPO, requiring a response from the applicant, usually regarding the application’s classification or the trademark’s distinctiveness.

Priority: Date of priority. The filing date of the first application concerning the mark, from which a six-month priority period is calculated. The applicant benefits from this period if they make a subsequent application for the same trademark outside the EU.

Opposition: A process to challenge the registration of a trademark by another party.

Most common fees

Application Fee: A fee associated with submitting a trademark application to the EUIPO. The application will not proceed if this fee is unpaid.

Opposition Fee: An official fee paid to the EUIPO by the party filing an opposition against a newly published EU trademark registration.

Renewal Fee: A fee for maintaining the trademark registration, payable to the EUIPO every ten years, with no limit on the number of renewals.

Author

Joose Kilpimaa