European Union Trademarks
Trademark Searching in Europe
The parameters for searching for prior rights in the European Union have changed significantly in the last decade or so. The European Union Trademark (EUTM, previously known as CTM) became a reality in 1996, and has since then proven to be the registration of choice for trademark owners. The European Union has been expanded in 2004 from 15 to 25 countries, in 2007 to 27 countries, and most recently to 28 countries in 2013, which compounds searching issues. The future promises further expansion, making prudent a rethinking of how to search and “clear” trademarks in Europe.
The EU Trademark Process
An EU trademark is valid in every member state of the European Union. Therefore, in order to obtain trademark registration the most convenient way is to file a European Union Trademark application. The timeframe for registering a European Union trademark is approximately 4-5 months provided there is no opposition. It is possible to file an opposition within a period of three months of the date of publication.
European Union Trademark Opposition
The EUIPO does not cite prior rights, it being up to the owners of prior rights to lodge an opposition against a EUTM application. If the EUTM is registered it is possible to file a cancellation action based on prior rights. About 22-25% of all European Union Trademark applications are met with an opposition. The opposition term is three (3) months and it is not possible to extend the opposition term. It is, however, possible to lodge a bare-bones opposition, i.e. without argumentation. Each opposition starts with a mandatory “cooling-off” period, which can be extended for 22 months at the joint request of both parties.
Opposition Against an EU Designation of a Registration
Since 2004, it has been possible to designate the European Union in an International (WIPO “Madrid Protocol) Registration under WIPO code “EM”. In that such a designation covers 28 countries and 500+ million consumers, this is a quite popular way to get trademark protection in Europe. However, about 25% of all EU designations are met with an opposition, and special rules apply.
NJORD Law Firm has been providing case law analysis for many years, and has access to all the major European case law databases, including Darts-IP. We offer customized case law searches concerning trademark, domain name, competitor monitoring, market survey, industrial analysis, etc.
Such analysis, accompanied by the relevant decisions can be very persuasive.
Our experienced trademark lawyers and European Trademark Attorneys can put together a customized case law search, and bill either by the hour or with a fixed fee, including pay-as-you-go.
Contact us for a free quote. Please include the marks, the classes and whether you want case law that supports confusing similarity, non-similarity, or both.
NJORD Law Firm has been practicing before the UK trademark authority UKIPO for many years prior to Brexit, and is continuing to practice before UKIPO, through our UK subsidiary. Our services include filing trademark applications, resolving distinctiveness and classification issues, lodging and resolving oppositions, and appeals.
European Trademark Reform 2016
The EU designation of an IR is often met with an opposition. In such cases special rules apply. Did you know that if the applicant does not have a domicile in the EU, there is a requirement that they have to be represented by counsel domiciled within the EU?
Peter Gustav Olson, Attorney at Law - Specialist in EU Trademarks
Peter Gustav Olson specializes in EU trademarks, EU design right, and domain names. In the last 19 years Peter Gustav Olson has filed over 1200 EUTM applications and has been involved in over 600 EUTM oppositions (as opponent as well as applicant). Peter Gustav Olson has a U.S. law degree from the University of California, Hastings College of the Law. In addition, Peter Gustav Olson frequently writes articles for the World Trademark Review, read the articles here.
NJORD Law Firm - Specialists in Trademark Protection
We rank among the leading law firms within intellectual property rights and assist entrepreneurs, companies, and government bodies in selecting, protecting, commercializing, and defending their intellectual property rights, including: trademarks, company and domain names, patents, designs, copyrights etc.