Community Trademark – IR Trademark

Through registration, a trademark can be legally defended within its respective scope of protection. Two instruments are available for cross-border trademark protection: the EU trademark and the internationally registered trademark (IR trademark).

A. The EU Trademark

Where legal protection is sought for the entire European Union, this can be achieved uniformly through registration of an EU trademark. The institution was introduced in 1993 as the “Community trademark” (most recently codified by Regulation (EC) No 207/2009) and renamed in the course of the EU trademark law reform on 23 March 2016: the Community trademark became the EU trademark, and the former office – the Office for Harmonization in the Internal Market (OHIM), based in Alicante – became the European Union Intellectual Property Office (EUIPO). The governing legal basis today is Regulation (EU) 2017/1001 (the codified version of the EU Trademark Regulation).

1. Definition and Scope of Protection

Since the reform, EU trademarks may be signs of any kind – in particular words (including personal names), images, letters, numbers, colours, the shape or packaging of goods, or even sounds – provided they are capable of distinguishing the goods or services of one business from those of others and can be represented in the register with sufficient clarity; graphic representability is no longer mandatorily required, which facilitates, for example, the registration of multimedia trademarks. The “EU certification mark” was also newly introduced. Holders may be any natural or legal person, including bodies governed by public law.

Upon registration, the holder acquires an exclusive right to prohibit third parties from using identical or confusingly similar signs for similar or identical goods/services. Territorial protection applies uniformly across the entire territory of the European Union and cannot be limited to individual member states; a ground for refusal in only one member state generally leads to the rejection of the entire application.

2. Application Procedure

Since the reform, applications must be filed exclusively directly with the EUIPO; the former option of filing via national trademark offices or the Benelux trademark office no longer exists. The application must contain, among other things, a request, particulars establishing the identity of the applicant, a list of goods and services classified according to the Nice Classification with a precise description of each individual item of goods/services (mere class headings no longer suffice), and a representation of the trademark.

The EUIPO first examines the formal requirements for the application and any absolute grounds for refusal, and assigns the application a filing date. An official similarity search is now carried out only upon express request and against payment of a fee. Once the application is published, a three-month opposition period begins; if no opposition is filed, or none succeeds, the trademark is registered. The term of protection is ten years from the filing date and can be renewed for further periods of ten years, any number of times.

B. The International Trademark (IR Trademark)

For international trademark protection outside or beyond the EU, registration of an IR trademark is available under the Madrid Agreement Concerning the International Registration of Marks (MMA, 1891) and the Protocol Relating to the Madrid Agreement (PMMA, 1989); the international register is maintained by the World Intellectual Property Organization (WIPO) in Geneva. The Madrid System today has around 115 contracting parties (including practically all EU member states, the United States, the United Kingdom, Japan, China, Russia and Australia); the European Union itself has been a party to the Protocol since 2004, meaning that a registered EU trademark can also serve as a base mark for an IR application.

A prerequisite for an IR application is an already successfully registered national trademark or EU trademark as the “base mark”. The application is filed via the national trademark office responsible for the applicant’s place of establishment or – where an EU trademark serves as the base – via the EUIPO, which forwards the application to WIPO; WIPO administers the further application and publication procedure and notifies the designated countries of extension, whose offices may refuse the requested protection within twelve or 18 months, respectively.

Registration of the IR trademark remains dependent on the base mark for the first five years; if the base mark lapses, the IR trademark also loses its effect. The term of protection under the PMMA – today practically the only convention still applied – is ten years and can be renewed any number of times.

C. Advantages and Disadvantages Compared

The IR trademark grants a bundle of individually acquired national protective rights: if protection is refused in one country, it remains in place in the other designated countries – although the country-specific particularities of maintaining the right must be observed in each, which frequently requires local representatives. The main advantage of the EU trademark lies in the uniform application procedure for all EU member states, and in the fact that genuine use in only one member state protects the trademark throughout the EU against cancellation for non-use; however, a ground for refusal in a single member state leads to the rejection of the entire application.