American Law and German Law

Trademark Protection in the European Union

by Eva Wagner
First published February 17, 2005

I. Introduction

As of October 1, 2004, the European Union is a contracting party to the Madrid Protocol on the Protection of Trademarks. Since this date it is not only possible for all applicants seeking trademark protection in the European Union to either file national applications in each member state of the European Union individually or to file an application for a Community trademark with a national office of a member state of the European Union or the Office for Harmonisation in the Internal Market (OHIM), but also to file an international application designating the European Union through a national office with the World Intellectual Property Organisation (WIPO).

II. National Trademark Applications

National trademark applications in each or several member states of the European Union are only advisable if the applicant is seeking trademark protection in only certain member states of the European Union. In this case the application proceedings follow the particular national trademark laws.

III. Community Trademarks

1) Legal basis

The legal basis for Community trademarks (CTMs) are Council Regulation (EC) No. 40/94 of December 20, 1993 on the Community trademark, Commission Regulation No. 2868/95 of December 13, 1995, referred to as the ‘Implementing Regulation’, and Commission Regulation No. 2869/95 of December 13, 1995, referred to as the ‘Fees Regulation’.

2) Eligibility

Any natural or legal person may register a Community trademark. There are, however, certain restrictions to who may be proprietor of a Community trademark: Any natural or legal person who is domiciled or has its seat or has a real and effective establishment within a country which is either a member state of the European Union, party to the Paris Convention on the Protection of Intellectual Property Rights, signatory to the TRIPS agreement or is a national of these countries is eligible to be proprietor of a Community trademark. Where none of these conditions is met, access to a Community trademark remains possible subject to reciprocity with the applicant’s country. A Community trademark may be filed by any natural person directly with the OHIM or a national industrial property office. Businesses from countries which are not member to the European Union, however, must be represented by a professional representative or a legal practicioner.

3) Languages

An application for a Community trademark may be filed in any of the official languages of the European Union. If the language chosen is not one of the official languages of the OHIM, the applicant must indicate a second language taken from the official ones an thereby accepts that this language may be used for opposition, revocation or invalidity proceedings. The official languages of the OHIM are English, French, German, Italian and Spanish.

Information on filed or registered trademarks can be found in the Community Register and the Community Trademarks Bulletin, which are frequently being published by the OHIM in all official languages of the European Union.

4) Application process

The course of the application proceedings is as follows: If the application contains all the necessary items and the applicant has paid the fees, a date of filing is assigned. A proprietor of a national trademark, which is identical and filed or registered for identical goods and services, may claim the seniority of the earlier trademark as date of filing for the Community trademark application. The OHIM and certain national offices then draw up a search report on existing earlier national or Community trademarks. The OHIM notifies the applicant directly of the result. If the applicant does not withdraw its application for reasons of the search report, the OHIM examines the application for absolute grounds of refusal: A Community trademark must be a sign which can be represented in a graphic form and make it possible to distinguish goods and services from those of another company. The sign must be distinctive, not a generic term, may not designate the quality, quantity, value, geographic origin or other characteristics and may not be a customary sign in ordinary language or bona fide and established practices of the trade.

The OHIM publishes the application in the Community Trademark Bulletin if there are no absolute grounds of refusal. From the date of the publication, a Community trademark may be opposed by proprietors of earlier trademark or Community trademark applications or registrations as well as proprietors of earlier famous trademarks, see Art. 5bis Paris Convention, for a period of three months. Earlier trademarks may, however, not be invoked if their proprietor cannot prove that they have been put in a genuine use during the past five years. Such objections may be overcome if the use of the sign in question has given it a distinctive character or a secondary meaning. The applicant may appeal against all decisions by the OHIM and thus defend its application.

In case the OHIM finally refuses the registration, a Community trademark application may be transferred into a national trademark application. If the OHIM neither finds absolute grounds of refusal nor oppositions are being filed or are being overcome, the Community trademark is being registered. The filing date of a registered Community trademark may be claimed as the date of filing (priority) for both national and international trademarks.

A registered trademark confers upon its proprietor protection against the reproduction and / or imitation of his trademark throughout the European Union. According to the rule of exhaustion, he may not prohibit the free movement of goods or services if he has proceeded, or agreed, to market goods under the trademark in a member state of the European Union. A Community trademark may be transferred and / or licensed in respect of all or part of the goods and services. A transfer must not result in the public being misled, in particular with regard to the type, quality or geographic origin of the goods and services.

In case of infringements, an owner of a Community trademark can seek protection before a Community trademark court designated in each member state of the European Union. He may choose between the two courts of the member states in which the infringement was committed or the defendant is domiciled. The court where the infringement was committed has only jurisdiction over its own territory, while the court where the defendant is domiciled has jurisdiction of all acts of an infringement committed within the European Union.

The protection conferred by a registered Community trademark lasts for ten years from the date of filing and may be renewed every ten years. All fees must be paid in Euros (€). The fees for the filing of an application are € 975 including up to three classes of goods and services plus an additional € 200 for each class of goods and services exceeding three. The application fee must be paid within one month of the submission of the application to the OHIM. The registration requires an additional payment of € 1100 plus an additional € 200 for each class of goods and services exceeding three.

A filed or registered Community trademark can be the basis for an international application with the WIPO through the OHIM.

IV. International Trademark Application under the Madrid Protocol

As a further consequence of its accession to the Madrid Protocol, the European Union may be designated in an international application.

1) Eligibility

Any person who is a national of, or has a domicile in, a state which is a party to the Madrid Protocol and who is a proprietor of a national trademark application or registration may file an international application with WIPO. If the basic trademark is a Community trademark, only natural or legal persons who are domiciled in or have their seat or their real and effective establishment within a country which is either a member state of the European Union, party to the Paris Convention, signatory to the TRIPS Agreement or are nationals of these countries are eligible. Where none of these requirements is met, access to a Community trademark as a basic trademark for an international application remains possible subject to reciprocity with the applicant’s country. The application must be presented to the International Bureau of the WIPO respectively through a national office (national trademark as basic mark) or the OHIM (Community trademark as basic trademark). In the latter case, the applicant may only designate countries which are contracting parties to the Madrid Protocol, and the application must be in English, French or Spanish (or contain a translation of the list of goods and services or assign its translation to the OHIM).

2) Application Process

An applicant may claim the priority (Art. 4 Paris Convention) of the basic national trademark if he files an international application within six months from the date of the national filing. If the basic trademark is a Community trademark (and identical with the international application and for identical goods and services), he may claim the seniority (date of filing) of the basic Community trademark as filing date of the international application. After a formal examination with regard to fees and identity with the basic trademark, the International Bureau registers the application in the International Register published in the WIPO Gazette and notifies all national offices of the contracting parties in which the applicant seeks protection. In case the international application designates the European Union, the WIPO notifies the OHIM. This notification triggers an eighteen months time limit for the national offices / OHIM to object the registration on grounds of absolute or relative grounds of refusal. The national offices of the designated countries determine the substantive conditions and scope of protection as well as the applicable procedure in case of refusal. The OHIM republishes the international application if it either has been filed in one the official languages of the OHIM (English, French, German, Italian and Spanish) or indicates a second language chosen from the OHIM languages. If it does not meet these requirements, the OHIM will object to the application and postpone the republication. From the republication onwards, an international application designating the European Union has the same effect as a published Community trademark application (Art. 146 CTMR).

3) Opting-back-provision

In case an international registration for the European Union has been refused or subsequently withdrawn, the applicant of the international application may either convert it into national applications (Art. 108 CTMR) or convert the designation into a designation of one or more member states of the European Union (Art. 154 CTMR). He must, however, do so within three months from the final refusal. The OHIM examines whether the requirements (designated member state must be contracting party to the Madrid Protocol which applies to all European countries except Malta) are met and then transmits the request to convert the international application to the WIPO, who shall notify national offices.

From the date of republication, the OHIM conducts a search and notifies the applicant or his representative of the result. At the same time, the OHIM examines the application for absolute grounds of refusal and must notify WIPO within six months from the republication. If the result is positive, the OHIM issues a provisional refusal to the WIPO. If the applicant is not domiciled in the European Union, he must appoint a representative from this point of time. If he does not appoint one, the OHIM issues final decision (which may be appealed before the Board of Appeal). If the OHIM does not find any absolute grounds of refusal, it issues a first statement of grant of protection which is not legally binding.

4) Oppositions / Third Party Objections

From this point of time, at the latest six months after the republication, and for a period of three months, proprietors of earlier trademarks may file oppositions, while third parties may file observations against the registration. Earlier oppositions and observations are deemed to be filed within this period. They must be filed in the same language as the international registration or the second language indicated. If the opposition or third party observation is admissible, the OHIM processes it and transmits its final outcome (first grant of protection or provisional refusal) to the WIPO. If no opposition or third party observation is filed or not justified, the OHIM will send a final statement of grant of protection to the WIPO. The final statement of grant of protection is legally binding.

5) Duration of protection

IR protection lasts ten years and may be maintained in force by payment of fees every ten years. It remains, however, dependent on its basic trademark for five years from the date of the international registration.

V. IR versus CTM

There are two options to obtain trademark protection in the European Union, but which one is best? The answer depends on the specific needs of the applicant and his business:

A Community trademark confers protection only within the European Union. Fees are paid for the application as well as for the registration. As it is a unitary trademark, absolute grounds of refusal result in no protection at all, whereas relative grounds of refusal may lead to its withdrawal. It takes only one application, one examination, one registration, one representative, however, and is less expensive than national applications in each country. The genuine use in one member state of the European Union is sufficient.

An IR is usually less costly than a CTM, and also non-European countries maybe designated. As it confers a bundle of rights, losing the registration in one country does not influence the protection in other countries. There is, however, no harmonised law, and each country applies its national rules. In each case of resistance a national representative is required, and the registration is dependent on its basic trademark for five years.

The United States of America acceded to the Madrid Protocol as of November 2, 2003. An applicant for an international registration may thus use an US trademark as its basic trademark. He ought, however, take into account the restrictive practices of the USPTO with regard to the classification of goods and services, as the classes of goods or services of he basic trademark must be identical with the ones of the international application.

Cite as: Wagner, Trademark Protection in the European Union, 14 German American Law Journal, http://www.amlaw.us/wagnertrademark2005.shtml (February 17, 2005).

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