Filing And Prosecution - EUTM Flashcards
What are the different ways you can obtain TM registration in the EU?
- Apply for national trademarks at any IPO in specific EU territories
- Apply for regional TM in Benelux
- Apply for an International Registration and designate each EU territory of interest
- File an application for EU-wide protection (1 application covering every EU member state) via EUIPO
- Apply for an International Registration and designate the EU
What does an EUTM cover?
Give 5 examples of EU member state countries
One trademark covering all 27 member states of the EU
Spain, France, Germany, Italy, Portugal, Poland, Netherlands, Sweden etc
Give some examples of notable non-EU members
UK, Switzerland and Norway
Explain Professional Representation in relation to EUTM
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
Benefits of EUTM
- Cost effective - cheaper to file and renew an EU TM as opposed to national TM’s in all 27 member states
- Enlargement - if more countries join the EU, existing trademarks are automatically extended to the new countries
- Size of the market - large population in EU, owners can enforce their mark in a large market
- Indefinite - as long as TM is renewed, it can last indefinitely
Who may apply for an EU TM?
Any natural or legal person including authorities under public law, irrespective of nationality or domicile
What kind of marks can an EU TM protect?
- Standard marks (logo, word, figurative etc) and unconventional marks (slogans, color, motion, pattern, sound)
- Collective marks
- Certification marks
NO series marks
Where are EU applications filed?
Online via the EU IPO website
Possible via post/courier but rarely done
CANNOT do via fax
What language(s) should the EU application be filed in?
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
What are the essential requirements (formalities) for an EU TM to be given a filing date?
- Application fee must have been paid
- The application is a request for the registration of an EU TM
- The applicant has been identified
- A representation of the TM has been included in the application
- Application contains a list of the goods and services
What happens if the essential filing requirements are not fulfilled? (Formalities)
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
What requirements are there for filing details of the applicant for an EUTM?
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
What classification system does an EUTM use?
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
How does the fast track application work?
What are the requirements?
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
Can an EUTM claim priority?
What are the requirements?
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)
What is exhibition priority?
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
What are the fees for a EUTM application? (For standard marks)
€850 for first class of goods/services
€50 for second class
€150 for third and each additional class
Optional search report fee €72
Don’t need to know the fees for collective and certification marks for EUTM but are they more or less expensive than standard marks?
More expensive
How is an EUTM application conducted?
Online, paid in Euros directly to EUIPO
Payment of fees can be deferred by 1 month after filing date
What are the two different search reports that can be conducted for an EUTM by the EUIPO?
- 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 - National Search
- EUIPO will search the national registers of certain EU member states
- has to be requested in application
- €72
How does the EUIPO conduct formalities examination?
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
How does the EUIPO conduct substantive examination?
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
What are the two options for overcoming examiners refusal (based on absolute grounds)?
- Appeal
- Conversion
How does an Appeal work for an EUTM?
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
How does conversion work for an EUTM?
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)
What happens once the EUTM passes examination?
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
What happens once the EUTM is registered?
What are the use requirements?
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
What are the differences between filing an EUTM and filing an International Registration designating the EU?
- 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)
