European Union Trade Marks (EUTM)

The European Union Trade Mark (EUTM) system offers businesses and individuals a single, unified trade mark registration that is enforceable across all member states of the European Union (EU). This system simplifies the protection of intellectual property rights in Europe, making it a cost-effective alternative to registering separate national trade marks in each EU country.

In this guide, we will cover what the EUTM system entails, how to apply for a trade mark, what can be registered, and the process of opposition and renewal.

What is a European Union Trade Mark (EUTM)?

An EUTM registration provides trade mark protection throughout the entire European Union with a single application. Administered by the European Union Intellectual Property Office (EUIPO), headquartered in Alicante, Spain, the EUTM system enables businesses to protect their brand in all current and future EU member states through a unitary registration.

While national trade mark systems continue to operate alongside the EUTM system, the EUTM is typically a more affordable and streamlined option for businesses seeking protection across the EU. For some, however, national registrations may still be more appropriate based on specific strategic or geographic needs.

Who Can Apply for an EUTM?

Any individual, company, or legal entity from anywhere in the world can apply for an EUTM. It is not restricted to EU residents. However, applicants who do not reside in the European Economic Area (EEA), which includes the EU member states plus Iceland, Liechtenstein, and Norway, must appoint a qualified legal representative based in the EEA to manage their application.

How to Apply for an EUTM

Applications for an EUTM are submitted directly to the EUIPO. The process involves the following steps:

Filing the Application: The application can be filed in any of the EU’s official languages, but applicants must also select a second language from the five working languages of the EUIPO—English, French, German, Italian, or Spanish—which can be used during the examination process or in case of any opposition.
Madrid Protocol Option: If certain conditions apply, applicants can also designate the EU as part of an international trade mark registration through the Madrid Protocol, a system that allows trade mark protection in multiple countries with one application. This option streamlines the process further, especially for those seeking protection outside the EU as well.

What Can Be Registered as an EUTM?

A wide range of signs and symbols that distinguish goods or services can be registered as an EUTM. This includes:

Words, including company names and slogans.
Logos and graphic designs.
Shapes of products or their packaging.
Colors or color combinations.
Sounds, in some cases.

However, not every sign is registrable. The following types of marks cannot be registered:

Descriptive marks: These are marks that describe the goods or services they represent (e.g., “Fresh” for fresh produce).
Marks based on a product’s shape or technical function: Marks that consist solely of shapes necessary for the product’s functionality or that add substantial value to the goods.
Generic or customary terms: Words that are commonly used in the relevant industry.
Misleading or deceptive marks: Marks that could mislead the public about the nature, quality, or origin of the goods or services.
Marks contrary to public policy: These include offensive or blasphemous marks or those prohibited by international conventions, such as national flags or certain protected symbols.

Examination and Search Process

Once an application is submitted, the EUIPO examines it on “absolute grounds” to ensure it meets the criteria for registrability. The EUIPO will also conduct an automatic search for earlier EUTMs or EU designations of international registrations that might conflict with the new application. The results of this search can be provided to the applicant at no additional cost, but it is up to the owners of the earlier marks to take action through opposition if necessary.

Applicants can also request searches from individual national IP offices, though this comes with additional fees and may provide limited insight, as not all countries (such as France, Germany, and Italy) conduct detailed searches.

Opposition Process

If the EUIPO finds no absolute grounds for refusal, the EUTM application is published in the Trade Marks Bulletin, opening a three-month opposition period. During this time, parties with earlier rights, such as owners of previously registered EUTMs or national trade marks, can oppose the registration if they believe it conflicts with their mark.

Opposition can be filed on the following grounds:

Earlier trade marks, both registered and well-known, can form the basis of opposition.
Owners of unregistered marks with more than local significance, provided the relevant national law offers protection against the use of similar marks.
Protected designations of origin (PDOs) and geographical indications (PGIs) under EU law.

If an opposition is successful, the EUTM application will be refused for the entire EU. However, the applicant may choose to convert the EUTM application into separate national applications for specific EU countries where no conflict exists.

Seniority and Existing National Registrations

If you already own national trade mark registrations in one or more EU member states, you can claim seniority when applying for an EUTM. This allows you to maintain your earlier national filing dates and extend those rights across the EU without needing to renew the national registrations separately. Seniority can be claimed at the time of filing or even after an EUTM is granted.

Duration, Use, and Renewal of an EUTM

Once granted, an EUTM registration lasts for 10 years from the date of filing and can be renewed indefinitely in 10-year increments. However, to maintain protection, the trade mark must be put to genuine use within five years of registration. If the mark is not used for five consecutive years, it could be vulnerable to cancellation for non-use.

In the case of infringement or disputes, the use of the mark in a single EU member state can be sufficient to establish use across the EU. However, this can vary depending on the specifics of each case, and a reasonable level of use in a significant part of the EU may be required to avoid cancellation.

Assignment, Licensing, and Invalidation

Assignment: An EUTM can be assigned to another party, but since it is a unitary registration, it cannot be split and assigned for only part of the EU. However, it can be transferred for some or all of the goods and services it covers.
Licensing: EUTMs can be licensed for all or part of the EU, allowing the owner to grant others the right to use the mark.
Invalidation: An EUTM can be invalidated if it is found to have been incorrectly registered on either absolute or relative grounds. However, if the owner of a prior right has knowingly allowed the EUTM to be used for five years or more, they may lose the ability to challenge its validity.

Conclusion

The European Union Trade Mark (EUTM) system is a streamlined and cost-effective way to protect your brand across all EU member states. With a single registration, businesses and individuals can secure their intellectual property rights throughout the entire European market, ensuring robust protection against potential infringers. Whether you are a small business expanding across borders or a multinational enterprise, the EUTM system provides a powerful tool for safeguarding your trade mark.

For those seeking help with the application process or advice on protecting their trade marks in the EU, our team of experienced IP professionals is here to assist you every step of the way.