What is an EU Trade Mark?
A EU Trade Mark (EUTM) is a single trade mark registration that provides protection in all of the member states of the European Union. EUTMs are dealt with by the European Intellectual Property Office (EUIPO) in Alicante, Spain, and over 117,000 applications were filed last year.
If you conduct business in the UK only, then a national registration is for you, and we can advise separately in this respect. But what happens after Brexit if you do business in more than one EU country? In this case, it is wise to consider filing for a EUTM. This article sets out the pros and cons of doing so.
Pros of an EU trade mark
The official fees in relation to a EUTM application start at 850 Euros for one class, with 150 Euros per additional class filed at the same time. This is a very reasonable cost for an exclusive right in all current and future Member States of the European Union, and of a significantly lower level than filing national applications in each country. As new Member States join the EU, existing EU trade marks automatically expand.
Registration of your trade mark means that it can be used and enforced in a market of almost 500 million consumers.
2) Easy administration
Applications may be filed online in any language of the EU. When renewal falls due after ten years, there is only one right to be dealt with, as opposed to a bundle of national rights. Further, national rights may be allowed to lapse, in order to rely on the EUTM, through claiming “seniority”. Licences and assignments may be recorded in one place. Lowering the administrative burden allows cost savings.
3) Fast Results
An EU trade mark may be registered relatively quickly. For a simple application with no objections or oppositions, it can be as little as 6 months from filing to registration. This is not as fast as obtaining a national registration in the UK, though still compares favourably with several other countries.
Cons to consider
1) Unitary Right
An EUTM is “unitary” in nature. Therefore, if another trade mark proprietor has a national right in an EU country, they may be able to attack your EUTM in its entirety. However, in such circumstances, it is possible to “convert” your application to national trade mark applications in those countries where the prior right does not exist.
2) Possibility of Oppositions
EUTMs may be opposed in the same way as national applications, and there is a larger pool of potential opponents. Such parties may consider your trade mark to be similar to their own under their usual rules of comparison, which may be different from those of the UK.
If your business is trading or soon to commence trading in more than one EU country, the EUTM route to trade mark registration should be considered, since it provides very cost effective EU wide trade mark protection.
Ward Trade Marks Limited is a Bury St Edmunds based specialist trade mark attorney firm.