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CITMA Paralegal Course > Filing And Prosecution - EUTM > Flashcards

Filing And Prosecution - EUTM Flashcards

1
Q

What are the different ways you can obtain TM registration in the EU?

A
  1. Apply for national trademarks at any IPO in specific EU territories
  2. Apply for regional TM in Benelux
  3. Apply for an International Registration and designate each EU territory of interest
  4. File an application for EU-wide protection (1 application covering every EU member state) via EUIPO
  5. Apply for an International Registration and designate the EU
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2
Q

What does an EUTM cover?

Give 5 examples of EU member state countries

A

One trademark covering all 27 member states of the EU

Spain, France, Germany, Italy, Portugal, Poland, Netherlands, Sweden etc

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3
Q

Give some examples of notable non-EU members

A

UK, Switzerland and Norway

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4
Q

Explain Professional Representation in relation to EUTM

A

Professional representation is optional for the filing of an EUTM but one may be required for other actions (i.e disputes/cancellations) depending on where the applicant resides.

An applicant that resides outside of the EEA (EU, Iceland, and Liechtenstein) must be represented by a professional representative in the EEA or by a legal practitioner working in the EEA

No obligation for the applicant to be represented if they have their domicile, principal place of business, or real and effective industrial/commercial establishment in the EEA

UK applicant would need to have a professional representative for disputes/other actions

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5
Q

Benefits of EUTM

A
  1. Cost effective - cheaper to file and renew an EU TM as opposed to national TM’s in all 27 member states
  2. Enlargement - if more countries join the EU, existing trademarks are automatically extended to the new countries
  3. Size of the market - large population in EU, owners can enforce their mark in a large market
  4. Indefinite - as long as TM is renewed, it can last indefinitely
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6
Q

Who may apply for an EU TM?

A

Any natural or legal person including authorities under public law, irrespective of nationality or domicile

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7
Q

What kind of marks can an EU TM protect?

A
  1. Standard marks (logo, word, figurative etc) and unconventional marks (slogans, color, motion, pattern, sound)
  2. Collective marks
  3. Certification marks

NO series marks

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8
Q

Where are EU applications filed?

A

Online via the EU IPO website

Possible via post/courier but rarely done

CANNOT do via fax

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9
Q

What language(s) should the EU application be filed in?

A

The application must identify a primary language and a secondary language

The filing language may be any of the 24 official languages of the EU (e.g. Danish, Dutch, Polish, Portuguese, Hungarian etc…)

The secondary language must also be included in the application which MUST be one of the following (English, French, German, Spanish, Italian)

All information on the application must be in the first language, second language serves as potential language for disputes I.e cancellations/oppositions

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10
Q

What are the essential requirements (formalities) for an EU TM to be given a filing date?

A
  1. Application fee must have been paid
  2. The application is a request for the registration of an EU TM
  3. The applicant has been identified
  4. A representation of the TM has been included in the application
  5. Application contains a list of the goods and services
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11
Q

What happens if the essential filing requirements are not fulfilled? (Formalities)

A

The EUIPO will issue a deficiency letter

If the deficiency is not remedied within 2 months, a new filing date will be issued

If the deficiency is not remedied in time, an application is treated as though it was not filed

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12
Q

What requirements are there for filing details of the applicant for an EUTM?

A

Need to identify the applicants name, address, nationality and where they are domiciled

If a company, good to include company registration number in the application

EUTM must be filed in the name of a natural person or legal entity capable of owning property

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13
Q

What classification system does an EUTM use?

A

EUIPO uses the Nice Classification

Class 1-34 - goods
Class 35-45 - services

The wording of the goods/services must be sufficiently clear and precise to allow the competent authorities and third parties to determine the protection conferred by the TM

Can use words such as ‘namely’ or ‘being’ but treated as restricting scope of protection

Can use ‘in particular’ - does not restrict scope, just provides an example

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14
Q

How does the fast track application work?

What are the requirements?

A

The EU IPO can examine SIMPLE trademarks quicker than they can for complex applications
If you file a fast track application it will be examined very quickly

Requirements
1. Goods/services must be selected from EUIPO database of pre-selected terms
2. Filing fees must be paid upfront
3. No certification/collective marks
4. Restrictions on priority and seniority claims
5. No color claims for shape mark/figurative marks
6. No national or EU searches allowed

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15
Q

Can an EUTM claim priority?

What are the requirements?

A

YES - can claim priority from an earlier filed TM if the earlier mark was a first filing

The EU TM must be filed within 6 months of the filing date of the first filing

Requirements
1. Priority claim must be filed together with the application
2. Identify the number, date and country of the first filing
3. TRIPLE IDENTITY - identical mark, identical goods and services and identical applicant
4. If filing cannot be found online - may need to provide proof of first filing (e.g. filing receipt/certified copy)

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16
Q

What is exhibition priority?

A

Companies often display their goods and services at various officially recognized exhibitions

An EU TM can then claim priority from the date of this exhibition if the EUTM is filed within 6 months of the first display at the exhibition

Quite rare

17
Q

What are the fees for a EUTM application? (For standard marks)

A

€850 for first class of goods/services
€50 for second class
€150 for third and each additional class

Optional search report fee €72

18
Q

Don’t need to know the fees for collective and certification marks for EUTM but are they more or less expensive than standard marks?

A

More expensive

19
Q

How is an EUTM application conducted?

A

Online, paid in Euros directly to EUIPO

Payment of fees can be deferred by 1 month after filing date

20
Q

What are the two different search reports that can be conducted for an EUTM by the EUIPO?

A
  1. EU Search
    - EUIPO will search the EU trademark register only
    - the applicant will receive a search report if it has been requested in the application
    - no official fee
  2. National Search
    - EUIPO will search the national registers of certain EU member states
    - has to be requested in application
    - €72
21
Q

How does the EUIPO conduct formalities examination?

A

Does the EUIPO require copies of priority documents?
Are the goods/services classified correctly?
Are the goods and services unclear and need clarification?
If you reside outside the EEA and have not listed a professional representative etc

If a problem is identified, EUIPO will issue a deficiency notice and grant two months in which to respond

If applicant is outside the EEA response to the examination must be done by a legal practitioner/professional representative in the EEA

22
Q

How does the EUIPO conduct substantive examination?

A

After formalities, the EUIPO conducts substantive examination

EUIPO needs to determine whether TM is inherently registrable (i,e cannot be descriptive, generic, non distinctive)

If an application is rejected on the basis of absolute grounds you will receive a notification and given a set 2 months to respond
(EUIPO will typically allow 1st extension of 2 months, but further extensions will need to be justified)

If you do not respond to objections/or if arguments fail then the application will be refused

23
Q

What are the two options for overcoming examiners refusal (based on absolute grounds)?

A
  1. Appeal
  2. Conversion
24
Q

How does an Appeal work for an EUTM?

A

If outside EEA must be done by legal practioner in EEA or professional representative

Once decision has been made - have a right to appeal

The Notice of Appeal must be filed within two months of the decision

Additional 2 months (four months from decision date) in which to substantiate the appeal (file legal arguments and evidence)

Deadlines NON EXTENDABLE

Fee €720

25
Q

How does conversion work for an EUTM?

A

If an EUTM is abandoned (I.e refused by the EUIPO or opposed by a third party) it can be converted into national trademarks in EU member states

Conversion useful for overcoming problems with EUTM’s unitary character

It can only be converted in member states in which the objection would not apply

If the refusal is EU-wide, then EU trademark cannot be converted in any states

Also not possible if EUTM was revoked on grounds of non-use

Official fee €200 - filed online

Deadline of 3 months from date when EUTM ceases to have effect (cannot be extended)

Can convert an International registration designating the EU to an International Registration designating the individual national territories (known as opting back) (except Malta)

26
Q

What happens once the EUTM passes examination?

A

It will be published by the EUIPO

Publication marks the start of a three month window of time in which interested parties may oppose the application

Opposition deadline is non-extendable

If no oppositions filed, the trademark will be registered

27
Q

What happens once the EUTM is registered?

What are the use requirements?

A

Registration certificate issued electronically

Renewal date is 10 years from filing date of the application

Can last indefinitely as long as it is renewed every 10 years and not otherwise cancelled

5 years

28
Q

What are the differences between filing an EUTM and filing an International Registration designating the EU?

A
  • non EEA professional representatives can file international registrations designating the EU, but they cannot represent the applicant in any subsequent proceedings before the EU IPO (e.g responding to refusals)
  • registration typically slower for International Registrations designating EU
  • opposition calculated differently (for IR with EU designations- 3 months, starting 1 month after publication)

CITMA Paralegal Course (23 decks)

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