UK, EU and INTL Trademarks Systems

Question 1

What is meant by the “unitary character” of an EU trademark?

Answer 1

If an applicant files a single trademark application at the EUIPO and it’s successful then the result is a single trademark that operates for the whole of the EU (unitary character)

Question 2

What are the official languages of the EUIPO?

Answer 2

English, French, German, Italian and Spanish.

Question 3

Can an EUIPO trademark be filed in a non-office language?

Answer 3

However, an application for a EUTM may be filed in any of the official EU languages

If the application was filed in a language which is not one of the languages of the Office, the Office shall arrange to have the application translated into the language indicated by the applicant… (Art 146 EUTMR)

Question 4

What is needed to obtain a filing date for a EUTM?

Answer 4

• Request for registration
• Name and address of the applicant
• List of goods and services for which the mark is to be registered (specify with sufficient clarity)
• A representation of the mark

Question 5

Explain the concept of seniority in the context of EU Trademark registration?

Answer 5

A seniority claim is a system whereby the owner of an EUTM application/registration, or an EU designation of an International Registration, can claim the prior rights of existing national registrations in the EU (or national designations of International Registrations), even if the national registrations are allowed to lapse.

Question 6

What criteria need to be met for a seniority claim?

Answer 6

• Seniority can be claimed only for goods/services in the national registration that are also in the EUTM;
• The mark in the EUTM and the national registration must be identical;
• The EUTM and the national registration must be in the same ownership; ownership by a related company is not sufficient;
• The national registration must not have lapsed at the time that seniority is claimed;

Question 7

How can a seniority claim be lost?

Answer 7

Art 39(4) (paraphrased)

• The seniority claim will be lost if the earlier trade mark is declared invalid or…
• …if it is revoked with effect prior to the filing date or priority date of the EUTM.

Question 8

When can seniority be claimed?

Answer 8

Seniority claims shall either be filed together with the EU trademark application or within two months of the filing date of the application.

Question 9

Explain the principle of priority as it relates to trademarks.

Answer 9

The trademark owner is granted a 6-month period from the date of first filing in order to be able to file in any other country as if the trademark would have been filed on the date of the first application (if priority is claimed).

Can claim priority for

• Same mark
• Same specification of goods or services (or narrower in later applications)
• Same proprietor or “successor in title”

Question 10

Explain the principle of coexistence in the context of the European Union Trade Mark system.

Answer 10

Where conflictingly similar trademarks coexist in the relevant territory.

During proceedings, a party may argue that since there are two marks that coexist in various jurisdictions, it should be an indication of an absence of a likelihood of confusion

However, the indicative value of coexistence should be treated with caution. There might be different reasons why the two signs coexist on a national level, e.g. a different legal or factual situation in the past or prior rights agreements between the parties involved.

Question 11

Explain briefly the principle of national treatment under the Paris Convention as it relates to trademarks.

Answer 11

• Same protection to nationals of other Contracting States that it grants to its own nationals (including the same legal remedy for infringement)
• Nationals of non-Contracting States are also entitled to national treatment if they are domiciled or have a real and effective industrial or commercial establishment in a Contracting State.

Question 12

What is the Madrid System?

Answer 12

• The Madrid System is governed by the Madrid Agreement and the Madrid Protocol relating to that Agreement
• The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties

Question 13

Who may use the Madrid System?

Answer 13

The Madrid System may be used only by a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is a party to the Madrid Agreement or the Madrid Protocol.

Question 14

As compared with the Madrid Agreement, the Protocol introduces what main innovations:

Answer 14

• An International Registration is deemed protected in designated states unless refusal is communicated to IB.
• An application in MP country of origin could be used as basis for international filing, rather than registration as required by MA
• Each Contracting Party in which the applicant seeks protection may elect for a period of 18 months (instead of one year), and an even longer period in the case of opposition, within which to declare that protection cannot be granted to the mark in its territory;

Question 15

Under the Madrid Protocol, what happens when an international registration is cancelled at the request of the Office of origin (for example because the basic application has been refused)?

Answer 15

The international application may be transformed into national (or regional) applications in the respective Contracting Parties in which the international registration had effect, each benefiting from the date of the international registration and, where applicable, its priority date.

This possibility does not exist under the Madrid Agreement.

Question 16

What is a central attack under the Madrid Agreement?

Answer 16

• •Alleviated the effects of ‘central attack’, whereby procuring cancellation of the mark in the country of origin within the first 5 years of IR was fatal to an IR made under MA.
• MP allows for a transformation of IR into a series of national applications

Question 17

What is the language regime for the Madrid Protocol?

Answer 17

French, English, Spanish

Question 18

When can a mark be the subject of an international registration?

Answer 18

A mark may be the subject of an international registration, if it has been registered, or if its registration has been applied for in the Office of origin.

Question 19

What is an “office of origin”?

Answer 19

The Office of the Contracting Party with respect to which a person or entity fulfils the nationality/domicile/establishment requirement.

Question 20

Describe the basis for a registration obtained under the Madrid Protocol?

Answer 20

• Make an application for registration in a Protocol country (this is the “basic” application at the office of origin).
• Make an application for international registration at the office of origin.
• The office of origin will check that the international application is for the same mark as the “basic” mark on which it is based.
• Office of origin forwards the application to WIPO International Bureau who conduct formality examinations
• If formalities are ok then the IB publishes it on the International register and notifies designated contracting countries
• Designated Offices will conduct substantive examinations and have (usually) 1 year to communicate refusal to IB, using local criteria for registration

Question 21

Describe the effect of a successful central attack under the Madrid Agreement

Answer 21

Madrid Agreement

• If within five years from the date of the international registration, the mark is declared invalid or otherwise lost in the country of origin, all the national registrations that are based upon it are lost. This is known as ‘central attack’.
• At the end of the five-year period, the opportunity for central attack ends – the fate of the registration in the country of origin does not determine the fate of registrations elsewhere.

Question 22

Describe the effect of a successful central attack under the Madrid Protocol.

Answer 22

• Where a central attack is successful under the Madrid Protocol, it is possible to transform the international registration into a series of national or regional applications.
• Under this provision, if within three months of cancellation the person who was the holder of the international registration files an application for the registration of the same mark with the office of any of the designated territories, that application shall be treated as if it had been filed on the date of the international registration.

Question 23

Explain the principle of co-existence in the context of the Community Trade Mark system.

Answer 23

• The CTM system is designed to co-exist with the national trademark systems.
• Each system confers individual and independent but interacting rights.
• This means that within the EU identical Community and national trademarks may coexist.
• A CTM is granted on a first come first served basis; an earlier national right does not confer preferential rights for the CTM and a pre-existing national right can be used to block or challenge a later CTM application.
• A CTM does not destroy an earlier national TM that has not been raised against it, instead, they co-exist. A CTM can, however, be used to block or challenge a later national level TM application.

Question 24

Describe the concept of conversion in the context of EU Trademarks?

Answer 24

• A feature of the EUTM system is that if an application is successfully opposed by someone on the basis of a right in any EU country, you cannot get an EUTM registration at all.
• Instead, if you wish to maintain protection in the other EU countries of interest you will have to apply for separate national registrations in any other EU countries that are available, through a process called “conversion”.
• The EUTM application is converted into national applications in the EU member states, retaining the original filing date (or priority date if applicable) of the EUTM application, which are then subject to the application processes of the national offices.