Turini Group - Marchio europeo

European trademark

Do you want to file a European trademark?

8 key point that you must know

We have acquired a long experience in the field of registration, renewal and protection of trademarks worldwide and we pay attention to the evolution trends of the law in this field. For this, we also address modern forms of protection that can help artists and companies to best give value to their own work.
We file trademark applications directly in Italy, at European level and International level, as well as worldwide thanks to a consolidated network of foreign attorneys chosen on the basis of their specific skills in order to satisfy every need.
Below 8 key points to approach the filing of a European trademark:

  1. What is the European trademark
  2. How to file a European trademark application
  3. The registration procedure
  4. The opposition by third parties
  5. The appeal against the decisions of the Office
  6. Withdrawal and limitation of the application
  7. Assignment of the trademark
  8. Reference regulations
1

 What is the European trademark

A European trademark, originally called Community Trademark, created with the Regulation n. 40/94 of the Council of Europe allows obtaining with an only request a trademark valid in the whole European territory. The European trademark is a single title which can be recorded, tranferred, gave away, canceled or forfeited. Its use would be forbidden only in the totality of the European countries, not in each of them. Only natural persons living in or citizen of the EU, legal persons whose main office is in the EU and also natural or legal persons with citizenship, main office or a stable organization in one of the EU countries subscribed to the Paris Convention or at the Agreement establishing the General Agreement on Tariffs and Trade (GATT) legitimately have the permission to record a European trademark. This system of recording coexists with the system of recording national and international trademarks according to the Madrid Agreement.

Before filing a trademark the client has to choose how to deposit it, verbally or graphically, in which classes recording it and where. The search for novelty is important to be sure of the uniqueness of the trademark, in other words, that it has not been recorded yet by someone else.

Once the preliminary analysis has been completed with the help of an expert adviser, as we suggest, it is possible to file the application for registration.

2

 How to file a European trademark application

The application for registration of a European trademark can be presented at the European Union Intellectual Property Office (EUIPO) located in Alicante (Spain). In order to file the application for registration the filling of a dedicated form, also downloadable from the internet, where there the applicant’s personal data – owner of the trademark –, the trademark’s data and the classes of products or service claimed will be indicated. As just said, the choice of the classes should be done carefully consulting the International (Nice) Classification of Goods and Services checking the edition in force at the moment of the application for registration. According to recent guidelines of the office it would not be possible indicated the number of classes but it would be necessary list the interested products and the services.

A color or black and white, depending on the choice, model of the trademark would be attached and the associated fees, which change according to the type of trademark and the classes. In the case of an application for registration of a collective trademark a copy of the regulation on the use of the trademark should be also attached. The compiling and sending of the application for a European trademark may seem easy but it is necessary to remember that the likely difficulty lays in the preliminary choices which should be taken before filing the application. The extension to the whole EU of the validity of this trademark determines the necessity of a major attention in the choice of the symbol because even the presence of the trademark in a single country of the EU could cause the rejection of the application. Thus, it is necessary consult a specialist and not proceed alone.

3

 The registration procedure

The consequence of the filing of the application is the number of application and a date of filing from which the pratical text begins.

The office controlling the formal conformity of the application and the absence of the so-called absolute obstacles for the application takes the first formal and technical text. A trademark not suiting the principle of morality can be rejected by the office as offensive trademark.

If, on the contrary, the application passes this text the application is published. After the date of publication starts a period of three months during which whoever might feel injured by the application because the trademark is similar to his/her own previous one or goes against his/her rights may oppose to the registration before the EUIPO.

In case of an opposition, it would follow an administrative procedure allowing who requested the trademark to defend himself toward the opponent in order to have his/her trademark published. Finally, the delivered response will cause the concession or the rejection of the trademark. If the potential opposition ends positively or after the three months, the trademark is published and registered in the classes indicated in the application. This trademark gives to the owner the exclusive right to use that name all over Europe for ten years and at the deadline the possibility to renew it for other ten years. If the trademark results unused for at least 5 years from its registration, it forfeits. If the application for registration of a European trademark is rejected because it already exists in some European countries, the application can be, a certain conditions, converted in a national application in the other countries where this obstacle does not exist.

4

 The opposition by third parties

The owner of a trademark or of previous rights have three months to oppose at the registration of the trademark starting from the publication of the application. It is good to know that with previous trademark we intend not only the antecedent European trademarks but also national and international trademarks effective in at least one of the European countries. Oppositions are often very complex and not in Italian.

To present an opposition it is necessary to fill a specific form available online, attach a copy of the previous trademarks or a proof of the previous rights and adequately motivate the appeal. This procedure involves precise taxes of opposition planned at the moment of the deposit.

Once the opposition has been received and its acceptability verified, EUIPO informs the parties and decides a deadline for presenting proofs and arguments sustaining their own reasons and after it gives its decision.

In this phase the help of an expert is fundamental because the documents will contain complex legal argumentation.

5

 The appeal against the decisions of the Office

Against the decision used by the office to reject, totally or partially, a filed application it is possible appeal within two months at the Boards of Appeal. The appeal should be substantially and legally adequately motivated. It is possible to appeal against the decision of the Boards of Appeal at the Court of First Instance and then at the court of justice.

Seen the nature and the difficulty of the procedure, be represented by an expert is needed.

6

 Withdrawal and limitation of the application

In every moment between the filed of the application and the grant of the trademark, the one who filed the application may withdraw his/her application (and therefore renounce to it) or limit it, reducing for instance the number of the claimed classes. When there is a conflict with a third part, owning previous rights, it may be necessary to withdraw or limit the trademark. Only within a limited period without extending the basic protection of the trademark, it is possible to modify its application. The modification is mandatory if the owner of the trademark changes his/her residence. Personal data modifications, relinquishment or limitations must be communicated at the office presenting a specific plaint.

7

 Assignment of the trademark

A trademark, besides being used, might be transferred or licensed. In the first case it is more or less like a sale therefore the trademark changes “owner”, the second is a “rent” through which the owner gives to a third the chance to use it. Transfer agreements are very delicate. Having a total knowledge of the trademark on the market is essential, thus a technical analysis aimed at controlling that the trademark is still alive, that there are not potential or current conflicts, that the trademark is not into an agreement of coexistence, or others. This is achievable analyzing carefully the trademark, or there is the possibility to buy an empty box. The value of the trademark is another important aspect, valuation not so easy if not made with an expert. The transfer, of license, of a trademark has to be communicated to EUIPO with a specific instance. This registration is necessary for the effectiveness toward third parts and above all toward the buyer and the licensee.

8

 Reference regulations

Regulation (EU) 2015/2424 into force from March 24, 2016.

Please feel free to contact Ms. Giulia Mugnaini

Giulia Mugnaini
Giulia Mugnaini

Trademarks & Designs

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