EUROPEAN UNION (EUTM) TRADE MARKS

Prior to using or registering a new European Union trade mark, searches should be carried out to check that your trade mark is free for use and registration. We will conduct a free trade mark search for IDENTICAL trade marks on the European Union Trade Mark (EUTM) Register. Please contact us with your trade mark and a list of goods and/or services of interest and we will do this free Trade Mark search for you.

If this is clear, we advise how best to obtain trade mark registration, where you need it. For example, in the UK via a UK Trade Mark, or further afield using national Trade Mark Applications or the International Trade Mark system.

If more detailed full clearance searches for confusingly similar trade marks are required, we offer a range of search packages and can advise upon the most appropriate package for you, along with costs.

In addition to registered trade mark searches, Albright IP encourages you to undertake your own investigation into the use of “unregistered” trade marks, for example, on the Internet, Yellow Pages, at Companies House and on Social Media sites such as Facebook® and Twitter®.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

In order to file your European Union Trade Mark application, we require: –

• A copy of your trade mark (JPEG images are preferable, if you are protecting a logo);
• Applicant name and address (this may be a natural person/persons or a legal entity, such as a Limited Liability Partnership (LLP) or a company); and
• a list of the goods and/or services in relation to which the trade mark is used or intended to be used.

If the EUTM application claims priority from a corresponding foreign trade mark application, please also provide the filing date, application number and country of first filing.

Once filed, an official filing receipt is issued by the European Union Intellectual Property Office (EUIPO) immediately. The filing receipt confirms the filing date, the trade mark and the goods and/or services applied for and allocates an application number.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

As part of the EUTM trade mark application procedure, the EUIPO conducts a search of the EUTM Register for earlier identical or similar trade marks. The results of this search are sent to the EUTM applicant for information and the EUIPO notifies the earlier trade mark proprietors of the later application. The holders of any earlier rights will have the opportunity to object to the registration of a later trade mark during the publication period.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

A EUTM application undergoes a two stage examination:

• Formalities/classification; and
• Absolute grounds (i.e. an assessment of whether the trade mark applied for is descriptive, non-distinctive or customary in the relevant trade). It should be considered that the EU has 23 official languages and as such, any word elements will be considered in all languages. Therefore, if a word is descriptive in any of the official languages, it may be refused.

If any objections is raised during examination, Albright IP can advise upon the most appropriate course of action.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Once the examination stage has been completed, the EUTM application will be published in the online Official Journal. This begins a three month period during which third parties have an opportunity to file opposition based upon prior registered or unregistered rights, for example.

Opposition against a EUTM application may only be made of the basis of earlier rights: –

• the trade mark applied for is identical with an earlier trade mark and for identical goods or services as the earlier mark;
• the trade mark applied for is identical with an earlier trade mark and for similar goods or services as the earlier mark;
• the trade mark applied for is similar to an eariler trade mark and for identical or similar goods or services as the earlier mark;
• the trade mark applied for is identical or similar to an earlier trade mark which has a reputation;

In general, the opposition rate against EUTM applications is higher than that of UK trade mark applications. This is largely because the holder of an earlier EUTM registration or earlier national trade mark registration from any of the EU Member States may oppose a later EUTM.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

After publication, if the EUTM application is accepted for registration, the Certificate of Registration will be issued by the EUIPO. This document confirms the registration details and includes a representation of the trade mark, the goods and services covered and also, the filing and registration dates. EUTM Registration Certificates are now issued electronically and can be downloaded from the EUIPO website.

Once the European Union Trade Mark application has registered you may use the ® symbol to indicate that your trade mark is now registered. This cannot be used until the trade mark is registered.

You may also wish to state “[YOUR TRADE MARK] is a Registered Community Trade Mark of [PROPRIETOR]”. This alerts others to your rights and can act as a deterrent to infringement.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

A European Union Trade Mark registration can last forever, provided that it is renewed every 10 years and that it is used in the EU in relation to the goods or services for which it is registered. A EUTM registration can be subject to action for revocation for non-use, five years after registration.

Albright IP will ensure that all renewal deadlines are diaried and will remind you when renewal is due, ensuring that your rights can be maintained.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

The European Union Trade Mark Regulation and Implementing Regulation