The European Union Trade Mark
The European Union Trade Mark (EUTM) is administered by the European Union Intellectual Property Office (EUIPO) located in Alicante, Spain.
An EUTM covers all 27 member states of the European Union, namely: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.
National registrations can still be obtained through the intellectual property offices of the individual countries.
Anyone can apply for an EUTM, even if they are based outside the EU. The level of examination carried out by the EUIPO is minimal and the onus is very much on existing trade mark owners to be vigilant in opposing any conflicting marks. An EUTM must be available in all member states. A prior national registration in any one of the states can block an EUTM. The EUIPO issues a search report listing any prior EUTMs. The mark is then advertised and owners of prior EUTMs or national registrations can lodge opposition within 3 months. Priority and "seniority" can be claimed from earlier national registrations, but the EUTM must be the same as the national registration (same mark, goods, services etc.). Registration is for an initial period of 10 years, renewable indefinitely for like periods. The enforcement of EUTM rights must be done through the national courts of the member states.
UNITED KINGDOM WITHDRAWAL FROM THE EUROPEAN UNION
The UK withdrew from the European Union at the beginning of 2020 and the transition period ended on 31 December 2020. EUTMs have ceased to apply in the United Kingdom, and UK representatives are no longer able to represent owners of trade marks or designs before the EUIPO.
Under the UK-EU exit agreement measures have been taken to ensure that owners of existing EU trade marks and designs will not suffer any loss of rights in respect of the United Kingdom. On 1 January 2021 the UKIPO created a corresponding UK registration for every registered EU trade mark (EUTM) and Registered Community Design (RCD).
Similar national registrations have also been created for International trade marks and designs which designate the EU.
After the deletion of UK representatives from the EU list we understand that the EUIPO will forward any notifications direct to the owner unless a new representative is appointed. We have therefore made arrangements to ensure that we continue to receive notifications from the EUIPO for all our current EUTMS. In the interests of ensuring a smooth transition we are bearing all of the associated costs.
We shall not be taking any steps in respect of International trade mark registrations which designate the EU as these are normally maintained through WIPO.
NEWLY-CREATED UK REGISTRATIONS
When the corresponding UK national registrations are created the UKIPO will only accept an address for service within the UK, and representatives within the EEA (European Economic Area) will not be admitted.
We shall become the UK representative in respect of the newly-created national trade marks and designs based on our existing EU cases. We shall become the address for service and carry out a check of the official register to ensure that the details have been correctly carried over. We shall also enter the new cases into our records and renewal system, sending out the usual reminders in due course. Again, this will all be done without charge for all our existing clients.
In the case of EU applications which were pending on 01 January 2021 no corresponding UK registrations have been created by the UKIPO. Provided a corresponding UK national application is filed no later than 30 September 2021, and this corresponds in all respects to the EU application, the UK case will retain the filing date of the pending EU case.
We are still able to obtain protection for new trade marks and designs within the EU via our existing associates. We can also obtain direct EU protection via the WIPO system for International registration of trade marks and designs.
FIND OUT MORE:
Visit the web site of the European Union Intellectual Property Office
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Last updated: 01 January 2021