European and international trade mark protection – EU trade mark and IR mark
In general, a trade mark can be defined as a sign (e.g. word, image, word–image combination, letter–number combinations, shapes, logos) or any other graphic sign that is suitable for distinguishing the goods and services of one undertaking from those of another. It serves certain functions, such as conferring distinctiveness on the goods and services offered commercially by an undertaking by setting a differentiating feature from the competing products and services of other undertakings. A trade mark can thus secure consumers’ trust in the quality and the safety of a product or a service.
I. Trade mark protection – cross‑border registration
By registering a trade mark, it can be legally defended for the respective approved scope of protection, which at the same time affords effective protection against imitation for the goods and services identified by the mark. In times of growing consumer goods markets and global corporate expansions, however, a multitude of interchangeable goods and services are being placed on the European and international markets in view of far‑reaching distribution possibilities. As a result, the need for a distinctive differentiating criterion beyond one’s national borders is becoming increasingly greater. This can be met in particular through effective trade mark protection, e.g. by way of cross‑border trade mark registration. This can be achieved by registering a European Union trade mark or an international registration (IR mark). To present the two forms mentioned more closely, the essential features are outlined below:
A. EU trade mark
If protection for a trade mark is sought uniformly for the entire European Union, this can be achieved by registering an EU trade mark.
1. Concept and legal basis
The EU trade mark was first introduced by Council Regulation (EC) No 40/94 on the Community trade mark (hereinafter CTMR), which has since been codified by Regulation (EC) No 207/2009.
Under the CTMR, trade marks registered for goods or services in accordance with its provisions are referred to as EU trade marks. Pursuant to Article 4 CTMR, EU trade marks may be “any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals and the shape or packaging of goods, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”.
Holders of EU trade marks may be any natural or legal persons, including bodies governed by public law (Article 5 CTMR).
2. Scope of protection and territorial reach
Upon valid registration of an EU trade mark, the proprietor acquires an exclusive right under Article 9 CTMR, which, inter alia, entitles the proprietor to prohibit third parties from using a sign identical with, or similar to, the EU trade mark for goods or services that are identical with, or similar to, those for which the EU trade mark is registered.
The territorial scope of protection of the EU trade mark is granted uniformly for the entire territory of the European Union and cannot be limited to individual Member States. If registration of the EU trade mark is refused, such refusal extends to all Member States of the European Union, so that protection for the entire EU territory is denied.
3. Registration procedure
a) Competent office
The competent office for the registration of the EU trade mark is the European Union Intellectual Property Office (EUIPO) in Alicante (formerly OHIM). At the applicant’s choice, an EU trade mark application may be filed directly with EUIPO or, alternatively, with the central industrial property office of a Member State or the Benelux Office for Intellectual Property, with the latter two being required (for additional fees) to forward the application documents to EUIPO within two weeks.
b) Application
The EU trade mark application must meet the minimum requirements laid down in Article 26 CTMR and the Implementing Regulation under Article 162(1). Among other things, the application must contain the following essential information:
- an application;
- particulars identifying the applicant;
- a list of the goods and services for which registration is sought (Nice classes);
- a representation of the mark;
- indications of any priority and/or seniority claims;
- where applicable, the name and address of a representative.
The classification of goods and services is governed by the common classification under Article 1 of the amended Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. It should be grouped by classes of the Nice Classification, with each group of goods and services preceded by the number of the relevant class. To assist applicants, EUIPO provides a simplified “EuroClass database” that can help guide trade mark filing and the assignment of goods and services to the correct classes.
c) Examination – publication
After timely payment of the fee for registration of an EU trade mark, EUIPO examines, inter alia, whether the formal filing requirements are met (e.g. signature, languages, contact details of the proprietor and/or representative, priority and/or seniority claims, classification of the goods and services applied for, and the existence of absolute grounds for refusal). It assigns a filing date to the application, which is relevant for determining the mark’s priority.
EUIPO also conducts an official EU search ex officio for similar signs and forwards the application to the central industrial property offices of the Member States for (optional) national searches. The applicant then receives the search reports of the national offices and of EUIPO for information.
If the examination is successfully completed without deficiencies being identified or after any deficiencies are remedied, the EU trade mark application is published in Part A of the EU Trade Marks Bulletin.
d) Opposition – registration – term
With publication of the application in Part A of the EU Trade Marks Bulletin, the three‑month opposition period begins (Article 41 CTMR).
If no opposition is filed, or any opposition is rejected, registration of the EU trade mark is published in Part B of the EU Trade Marks Bulletin and the applicant is informed of the registration by the issuance of a registration certificate.
Pursuant to Article 46 CTMR, the term of protection of an EU trade mark registration is ten years from the filing date, and under Article 47 CTMR it may be renewed for further periods of ten years.
B. International registration (IR mark)
If, by contrast, international trade mark protection is sought, this can be achieved by registering an internationally registered mark (IR mark).
1. Legal basis
Registration of an IR mark is carried out under the Madrid Agreement (MMA) of 1891 on the International Registration of Marks and the Protocol to the Madrid Agreement (PMMA) of 1989, under which it is possible to have an IR mark entered in an international register administered centrally by the World Intellectual Property Organization (WIPO) in Geneva.
More than 80 countries have now acceded to the Madrid Agreement and the Madrid Protocol (the Madrid Union), including most EU Member States, the USA, Australia, Japan, Russia, China, etc. Since 2004, the European Community has also acceded as an independent supranational organisation and member of the Union, so that an EU trade mark can now also be used as a basic mark for an IR mark application.
2. Application procedure
Unlike the EU trade mark, an application for an IR mark requires that a mark has already been successfully registered with the national trade mark office competent for the applicant’s seat or establishment. This nationally registered mark is mandatorily required as the “basic mark” for the further application procedure of the IR mark because it is based on it. As mentioned above, a successfully registered EU trade mark can likewise serve as the basic mark for an IR mark application.
An application for an IR mark is filed via the national trade mark office competent for the applicant’s seat, by requesting international registration and designating the desired participating countries in which protection is sought. If the basic mark is an EU trade mark, the request for international protection is filed via EUIPO in Alicante.
The application is forwarded by the competent national office to WIPO in Geneva, which administers the further application and publication procedure, publishes the registration in the Gazette of International Marks, and informs the national trade mark offices of the designated countries of the protection sought. These offices then examine whether grounds for refusal exist under the relevant national provisions and decide individually whether protection can be granted to the IR mark in their country. If the application for international registration meets all requirements, WIPO records it in the international register, with the national offices of the designated countries having one year or 18 months to refuse protection in their territory.
3. Scope and duration of protection
Provided there are no legal obstacles, the IR mark enjoys the same protection as a national mark in each designated country. This also means that the provisions of the respective country that are relevant to maintaining the right must be observed separately.
It should be noted that the international registration depends for a period of five years on the national registration of the basic mark and thus loses its validity if the national basic mark loses its registration.
The duration of protection of the IR mark is 20 years under the MMA, and 10 years under the PMMA, and may be renewed indefinitely.
II. Advantages and disadvantages of the EU trade mark and the IR mark
The choice between an EU trade mark and an IR mark should be made on a case‑by‑case basis, taking into account all circumstances and interests and weighing the advantages and disadvantages as well as the costs and time involved.
Unlike the EU trade mark, the IR mark enjoys a bundle of multinational rights that are granted individually. If protection is refused in one of the countries, any protection granted in the other selected countries remains in force. However, the right‑maintaining requirements of each country must also be observed individually, which usually necessitates a separate similarity search and the involvement of a knowledgeable local representative.
The key advantage of the EU trade mark, on the other hand, is that the application procedure is conducted uniformly for all EU Member States, without the need for a separate procedure in each individual Member State. However, if there is a ground for refusal in only one Member State, the entire EU trade mark application is uniformly rejected as a whole.
Another advantage of the EU trade mark to be mentioned is that use of the mark in only one Member State has right‑preserving effect and the mark is thus deemed to be used in all countries. It therefore cannot be cancelled on the ground of non‑use.
(Status: January 2013. All information provided without guarantee.)