Trademark Protection in the European Union
Since April 1, 1996, it has been possible, under the EU Trademark Regulation, to obtain trademark protection in the European Union through a single registration extending over all countries of the Union: an EU Trademark. The EU Trademark has been created side by side with - not in replacement of - the national legislation of the EU-countries; this means that the existing national registrations remain in force and that it remains possible to file trademarks on a national level. The system of international registration continues to exist as well.
The advantages reside in simplification: there is one application and one registration procedure. Hence, there is only one examination procedure for distinctiveness and only one opposition procedure.
Accordingly, upon the expiry of the first term, which is 10 years, only one renewal has to be requested. If there already exist registrations of the trademark in one or more of the EU-countries, these can be consolidated in the EU Trademark registration. However, this is subject to the condition that the trademarks in question are registered in the name of the same holder and relate to the same goods and/or services.
There is a central procedure for entering amendments, such as assignment, change of name/address, and licences.
Genuine use of the trademark in one country is generally considered to suffice for maintaining the rights in the entire region. This can be very advantageous if it is not the intention to use the trademark in all countries within a period of five years, or if one does not succeed in doing so. It can also be favorable in the case where the use of the trademark is impeded in a part of the EU-region, for instance through a prior right of a third party. Provided that the trademark has been used elsewhere in the EU, the trademark revives as soon as the impediment has been removed.
Central applicability: depending on the circumstances, infringement of an EU Trademark can be fought for the entire EU-region through a single procedure.
The EU Trademark can also be cost-saving, depending on the number of countries of interest, what countries they are and also on the question in what other countries protection is desired.
Seniority claim: the rights in earlier national registrations within the European Union can be incorporated into an EU Trademark by means of a seniority claim. The earlier national registration(s) may then be allowed to lapse, which may of course result in a considerable saving on renewal costs.
The trademark must be distinctive in all countries of the EU. During the search of prior trademark registrations, it is checked whether the trademark is not descriptive in any language or dialect of the EU in respect of the goods or services for which it has been applied for. For instance, the trademark FLOKATIL, which in the Netherlands is a good brand name for carpets, would probably be refused when registered as an EU Trademark, because in Greek it simply means "woven".
The trademark must be available in all countries. Opposition based on a prior right of a third party in any of the countries may result in a refusal of the registration. When in such a case the trademark is registered in the national registers, it is only refused in the country in question.
The EU Trademark does not take precedence over national rights. This can mean that even after many years, a fatal objection in any of the countries may under particular circumstances result in cancellation.
In a situation where the EU Trademark is refused or deleted, there is the possibility of conversion: in the countries where the obstacle that has led to refusal does not exist, national applications can be filed while maintaining the date that applied to the EU Trademark. Hence, the risk is entirely of a financial nature.