EUTM Flashcards
Conversion - basics
Can request conversion of EUTM app or EUTM to a national TM:
(a) to the extent that the EUTM app is refused, withdrawn or deemed withdrawn
(b) to the extent that the EUTM ceases to have effect
Conversion - shall not take place:
(a) where the EUTM has been revoked on the grounds of non-use, unless in the MS in which the conversion is to take place, the EUTM has been put to use which would be considered genuine use by the law of that MS; or
(b) for the purpose of protection in a MS in which, in accordance with the decision of the EUIPO or of the national court, grounds for refusal of registration/revocation/invalidity apply to the EUTM app/EUTM
if the EUIPO or TM court refused/invalidated a EUTM/EUTM app by reference to the language of a MS, conversion shall be excluded for all the MS in which that language is one of the official languages
if refused/invalidated on absolute grounds which are found to apply throughout the EU , or on account of an earlier EUTM, or other EU industrial property right, conversion shall be excluded for all MS
Conversion - effects
shall in enjoy, in respect of the MS concerned:
filing/priority date of EUTM/EUTM app and, if applicable, seniority
Conversion - time limits
three months from expiry/withdrawal/refusal etc.
request for conversion - submission
grounds for conversion
MS in respect of which conversion is requested
goods and services subject to conversion
conversion fee
if deficient, the EUIPO sends an invitation to correct within the prescribed time limit
if fee not paid by the end of the 3 month period, the request is deemed not to have been filed
conversion - formalities (MS)
Any MS to which the request is transmitted may require that the applicant shall:
(a) pay the national application fee
(b) file a translation in of the official languages of the State in question of the request and of the documents accompanying it
(c) indicate an AFS in the State
(d) supply more representations of the TM
within not less than 2 months
Seniority
existing, earlier TM registration in a MS, Benelux or under international arrangements having effect in a MS
claim seniority in respect of identical TM
for identical/narrower goods/services
same ownership
seniority claimed on filing of the EUTM app or 2 months after
must specify:
- MS
- file number
- filing date
- goods and services
- supporting documentation (3 months from filing date, but if seniority not claimed on filing, 3 months from the receipt by the EUIPO of the seniority claim)
effects:
where the proprietor of the EUTM surrenders the earlier TM or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier TM had continued to be registered
if the earlier TM is revoked prior to filing/priority date of the EUTM, the seniority claim will lapse
if claiming when having a registered EU TM, need also to supply name and address of the proprietor
TPOs
limited to absolute grounds and entitlement
any natural or legal person and any group or body representing manufacturers, producers, traders, consumers or suppliers of services
opposition vs UK
in EU, cannot oppose on absolute grounds
in EU, opposition period is 3 months from publication of application
infringement special provisions
The proprietor can prevent a third party from brining goods, in the course of trade, into EU, without being released for free circulation there, where such goods, including packaging, come from 3rd countries and bear without authorisation a TM which is identical with the EUTM registered in respect of such goods, or which cannot be distinguished in essential aspects from that TM.
This is without prejudice to rights acquired before the filing/priority date.
This does not apply if evidence is provided that the proprietor is not entitled to prohibit the placing of the goods on the market in the country of final destination.
