- Our company has expanded in five European markets. How should we proceed in order to protect our interests?
The European Union Trademark (EUTM) registration system provides for a single registration process covering all current and future country member states. This provides cost efficiency as well as great savings in time but is an all or nothing approach. This means that, should a EUTM application get rejected by the European Union Intellectual Property Office (EUIPO), this will result in no registration for the whole of the EU. An application cannot be accepted or rejected for parts of the EU. Considering this, an applicant must clarify the degree of investment and expansion in those countries. It is generally recommended to proceed with national registrations for the specific countries as well as for an EUTM application which will act as a safety net.
- Can I register a European Trademark before actually making use of it?
There exists no requirement for prior use of the trademark (TM). The EU is a first to file jurisdiction i.e., the first person to file for a TM registration will be the one to own the exclusive right in the TM.
- Should I proceed with a national trademark application at first and then with a European trademark application?
Unlike the international trademark system based on the Madrid protocol and agreement, the European system has no requirement for an existing base application. Therefore, applicants may proceed directly with a European TM application as in the case of national TM applications.
- What protection is offered by our national trademark registration?
Contrary to public opinion, a Cypriot Trademark registration offers protection only within Cypriot territory. A national registration such as this one will neither offer protection nor enforcement throughout the EU.
- How much time will it take for a European trademark application to be registered?
Assuming that no opposition is lodged against the TM application, it will take approximately 6-8 months for a TM application to be registered.
- Why then not proceed directly with a European trademark application instead of a national one?
This is often an important question at the time of applying. As explained in Question 1, if a national trademark application gets rejected, it will be rejected only in that country. The opponent pool is much wider in the case of EUTM applications contrasted to national TM applications. Therefore, the wiser choice will be to proceed with a national application and then with a EUTM application due to the fact that it might be easier for a national application to be registered and in the event that a EUTM application gets rejected, a registration will already be in place.
- What is priority?
Claiming priority is a great way to strengthen the protection afforded when applying for multiple TMs worldwide or even between Member States and the EU. As an example, a EUTM will be afforded an earlier date of protection (priority date) which will be the same as the earlier national TM filing date. Priority, however, may only be claimed during the 6 months following the first filing. Therefore, a decision as regards claiming priority must be made prior to any filing.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.