EU & International Trademarks

European Trademark

The European Community Trademark allows for a single unitary trademark enforceable directly throughout the EU. It is necessary to register the trademark. It may consist of signs capable of being represented graphically including names, designs, letters, numerals, the shape of goods or packaging. The signs must be capable of distinguishing the goods and services of one business from that of another.

The community trademark confers the owner with the exclusive rights to prohibit third parties form the following for commercial purposes;

• using a sign which is identical with the trademark in relation to goods or services which are identical with the trademark.
• using the sign where there is a likelihood of confusion with another trademark.
• using a sign which is identical to or similar to the community trademark in relation to goods or services which are not similar for those for which the community trademark is registered, where this use takes advantage of the repute and distinctive character of the trademark.

The owners of community trademark may not prohibit third parties from doing the following for commercial purposes;

• using their own name and address.
• indicating characteristics of the goods such as kind, quality, or quantity.
• using the trademark where it is necessary to indicate the purpose of a product or service as accessories or spare parts.

The owner of a community trademark must make genuine use of it for the 5 years following registration. They may be subject to sanctions for non-use if they do not.

Application

The community trademark may be filed with

• the Office for the Harmonizing of the Internal Market.
• the central industrial property office of the state.
• the Benelux Office for Intellectual Property.

Applications filed other than at the central office are transmitted to the OHIM after filing.

The application must contain the requisite details in respect of the mark, the goods and services in respect of which it is requested. A filing fee must be paid. Once documents are produced and the fee is paid, the application is given a date.

A person who has registered a trademark in one of the states pursuant to the Paris Convention or the WTO Convention shall enjoy, for the purpose of filing a community trademark for the same mark, a right of priority for a period of six months from the date of filing of the first application. The owner of the earlier trademark registered in the state, who files an identical application for a trademark, intended as a community trademark, may claim the seniority of the earlier trademark.

Once filed, the office examines whether it meets the conditions for a community trademark. The publication will be made to allow third parties to opposed granting of the trademark on the basis of earlier rights. If the application for a trademark meets all the requirements and is either accepted or not opposed, it is published.

The Community trademark lasts for 10 years from the date of filing. Registration may be renewed for another 10 years. This must be filed within six months before the end of the protection period.

The rights of a proprietor may be declared revoked

• if the trademark has not been subject to genuine use in the EU for five years.
• the trademark has become the common name for the product or service.
• it is of such a nature so as to deceive the public as to the nature, quality, or geographical origin of the goods.

There are appeal provisions to a board of appeal.

It is possible to file for a collective trademark. This may be done by associations of manufacturers, producers, suppliers, traders, or other equivalent bodies.

The proceedings relating to community trademarks are taken in courts designated by the member states as having jurisdiction. The European judgments regulation determines which court has proper jurisdiction.

The applicant or owner of a community trademark, may in some cases request it be converted into a national trademark.

Trademark Directive

The EU trademarks directive harmonises EU laws on trademarks It sets out criteria for registration of a mark in relation to goods or services. It provides broadly for the criteria that are reflected in the UK legislation.

Trademarks are to allow owners to stop the use of an identical or confusingly similar mark on goods and services that are dissimilar to those of the owners if it is well known in the state.

The directive requires generally that the mark be used in the state in connection with goods or services within five years and during each continuous five-year period . If it is not so use it may be revoked or not be reregistered

A trademark can be refused prior to registration, or may subsequently be declared invalid, for a number of reasons including that:

• it is not distinctive;
• it is merely descriptive;
• it consists of signs which are customary in the current language of the trade in question;
• it is contrary to the principles that underpin constitutional laws and regulations or accepted principles of morality;
• it is of such a nature as to mislead the public, for instance, as to the nature, quality or geographical origins of the product or service.

A trademark is also refused or may be declared invalid if it is identical or similar to a trademark that has been registered previously.

Rights

The owner has an exclusive right to the trademark that has been created. They may prohibit anyone from using a sign which is identical or so similar as to lead to a risk of confusion in the consumer’s mind.

The owner may not prohibit the use of the trademark by those acting in the course of their business, where the following need to be indicated:

• a name or address of a third party, when the latter is a natural person;
• features of goods or services covered by the trademark;
• the intended purpose of goods or services.

The proprietor of a trade mark must make genuine use of the trademark within 5 years of its registration. Use interrupted during a continuous 5 year period shall subject the trademark to sanctions for non-use.

Applications must contain:

• a request for registration;
• information identifying the applicant;
• a list of the goods and services for which registration is requested;
• a representation of the trademark which allows both the authorities and the public to ascertain what is being protected.

The application is subject to the payment of a fee to be determined by the EU country concerned.

Trademarks are registered for a period of 10 years from the date of filing. They can be renewed for a further 10 years at the request of the owner on the payment of a renewal fee. The owner will be informed by the national trademark office of the expiry of their trademark 6 months in advance of that expiry date.

International Conventions

The Madrid protocol system is operated by the World International property Organisation. The European Union itself is a member.A UK or community trademark may be the basis for application for protection under the convention.

The Madrid protocol permits the maintenance of a trademark on a worldwide basis?

The Paris Convention for protection of industrial property  was one of the earliest commercial conventions. Under the convention it is possible to make a first application in any state and within 12 months apply for registration/protection in other states. The date of priority dates back to the date of the first application in the convention state.

The principle also applies to patterns and designs.