I want to have my logo protected in several EU countries. What is better – to have separate national trademark registrations or an EU registration? What are the pros and cons?
Trademark rights have a territorial character, meaning that protection will be in force only in the country where the trademark is registered. If you want your mark to be protected in several EU countries, a good option is to apply for a European Union trade mark (EUTM), which is registered by the European Union Intellectual Property Office (EUIPO). A single EUTM registration results in a trademark being valid in all current and future EU Member States. In comparison, national trademark registrations will be protected only in those countries where they are registered.
Registering a EUTM may be cheaper than registering several national trademarks (depending on how many trademarks need to be registered). If you are certain that you will be actually using your trademark in several EU countries, we suggest registering a EUTM.
On the other hand, trademark registrations may be revoked due to non-use for 5 years following registration or cancelled due to earlier trademark rights or for other reasons. This applies to both a EUTM and national trademarks. If a EUTM registration is revoked or cancelled, it will be revoked or cancelled in all EU countries. But if a national trademark registration is revoked or cancelled, it will be revoked or cancelled only in the particular country, so if you have several national trademark registrations the other registered trademarks will remain unaffected. The potential circle of opponents is wider in the case of EUTMs as they may be from any Member State.
Therefore, we often advise registering national trademarks in the most important jurisdictions in the EU and to have a EUTM registration in addition ‒ especially if your business is only developing and not yet present in several EU countries.
What is cheaper – let’s say how much does EU registration cost versus three national registrations in the Baltics?
Three national registrations are cheaper in comparison to a EUTM registration. The official fee for registration of a EUTM in one class of goods and services is EUR 850. An additional fee of EUR 50 applies for a second class and EUR 150 for a third and each following class.
The official fee for registration of a national trademark in one class of goods and services is EUR 185 in Latvia, EUR 180 in Lithuania and EUR 145 for Estonia. For each following class an additional fee of EUR 30 – 45 (depending on the country) applies.
Applying for national registrations may look appealing initially. However, the more national registrations you choose, the higher the price will be. Applying for a EUTM will be cheaper than for several national trademark registrations ‒ especially if you are active or are planning to be active in a large part of the EU.
Moreover, if you intend to use external trademark registration services, the service fees for three separate applications would likely be higher than for one EUTM application.
What is faster – let’s say how long does EU registration take versus three national registrations in the Baltics?
The speed of EUTM registration depends on various factors such as the complexity of the trademark and potential oppositions from other trademark owners. Therefore registration time for a EUTM can be from 4 months to 2 years.
In Latvia, the registration process for a national trademark will usually take up to 5 – 7 months. In Lithuania it takes 6 – 9 months and in Estonia 8 – 12 months. This means that registration of a EUTM can be faster and more efficient in the long run.
At the same time remember that trademark protection starts right from the filing date and not from its registration date (provided that the trademark does become registered at the end of the process). Therefore speed of registration should not be decisive for your choice of the most appropriate type of trademark.
Is EUTM registration valid in the territory of all EU Member States, including overseas regions? Will it be valid in the UK after possible Brexit?
EUTM registrations are valid in all EU Member States including some of their overseas regions:
Denmark: Greenland and the Faroe Islands are excluded – it is necessary to obtain a national trademark in Denmark.
Spain: the Canary Islands, Ceuta and Melilla are included.
France: Martinique, Guadeloupe, Reunion, Guyana are included.
However, New Caledonia, Wallis and Futuna, French Polynesia, French Southern and Antarctic Territories, Mayotte are excluded. In those regions, it will be necessary to obtain a French trademark registration in order to be protected.
Portugal: the Azores and Madeira are included.
With regard to Brexit, as a general rule under EU law EUTMs would cease to be protected in the UK as from the UK’s exit from the EU. However, continuity of protection of EUTMs in the UK may be possible depending on the conditions for EUTM protection that may be agreed upon between the EU and the UK (if any) or by the law of the UK. Currently the UK has expressed its position that EUTMs will continue to be protected and to be enforceable in the UK. To seek such protection EUTM owners will need to apply for an equivalent trade mark registered in the UK within 9 months after Brexit and a UK trademark will be afforded the same priority as a EUTM. Therefore we advise current and future EUTM owners to follow developments with Brexit and to act accordingly.
What can be registered as a EUTM? Can I register a smell or a sound as a EUTM?
A EUTM can consist of any signs, in particular words (including personal names), or designs, letters, numerals, colours, the shape of goods, or of the packaging of goods or sounds. A mark must also comply with certain other requirements, for example, it must be a distinctive meaning so that it cannot be descriptive of goods and services that it is registered for. As from 2017 the graphic representation requirement for a mark has been abolished, so it is also possible to register smells, although doing so is extremely difficult.
For national trademark registration the procedure seems to be clear – I apply in a national patent office acting myself or via local patent attorneys. What is the procedure for EUTM registration?
EUTM applications can only be filed at the EUIPO. There are two ways to register an application: through a single registration filed online (FastTrack), or filed in paper form (by post or by special courier service).
Any trademark applicant can start the application process. However, a EUTM applicant who does not have their domicile or principal place of business or a real and effective industrial or commercial establishment within the European Economic Area will have to appoint a representative before or after receiving a formal deficiency letter concerning lack of representation before the EUIPO. You will need a legal practitioner qualified in one of the Member States and having their place of business within the EU or a professional representative whose name appears on the list maintained for this purpose by the EUIPO.
Should EUTM registration be based on a national trademark registration? If so, is there a period within which EU registration depends on the national one?
No, it need not. Unlike in the case of international trademark registrations you do not need a national trademark registration as a basis to apply for a EUTM. However, you may use your national registration to claim priority, i.e. your EUTM will be afforded an earlier date of protection (priority date) which will be the same as your earlier national trademark filing date. Priority may be claimed during the 6 months following the first filing of the national trademark and it must be done on the same date when the EUTM application is filed. Therefore you need to decide quickly whether you want to claim priority for your national trademark registration for the purpose of your EUTM registration.
Should I use the mark before registration as a EUTM and prove this use to register it?
No, there is no requirement to show prior use of the mark before its registration as a EUTM.
The first person to file for a EUTM registration will be the one to own the exclusive right in the trademark. Therefore sometimes we would even advise you to avoid using a trademark before applying for registration to prevent the situation where another person likes your trademark, is quicker and files for the trademark registration before you.
What happens to a EU application if it is rejected in one of the countries?
If your trademark meets all the requirements, then the EUIPO registers the trademark. Only the EUIPO decides on EUTM registration and unlike international trademark registrations the individual Member States of the EU do not have the right to object to the EU trademark registration.
How do I enforce EUTM registration – for example, I see my trademark rights are infringed in Latvia. What do I do?
First, you should check if your trademark is being used for the same or similar goods or services that your trademark is registered for, or you should consider whether your trademark could be deemed to be well known or with a good reputation under the applicable trademark law. This means that it would be protected regardless of the goods and services that it is registered for.
If so, then your trademark rights are indeed being infringed and standard action would be to send a letter requesting the infringer to cease and desist infringing. If the infringer does not comply, you can turn to the national courts to seek a remedy, e.g., seizure of infringing goods, prohibition of further infringement, payment of compensation for the infringement. In certain situations you can also turn to the police to initiate criminal or administrative proceedings against the infringer. Sending a cease and desist letter before going to the court or the police is not mandatory, although it may provide a quicker and more cost-effective result.
Can I extend EU registration to cover, for example, the USA?
Such an extension would not be possible and to have a trademark protected in the USA you would need to file for state or federal registration or obtain trademark protection under common law rights.
However, you may use a EUTM as a basis for your international registration with the World Intellectual Property Organization (WIPO). In order to file an international trademark registration application, you must register or apply for registration of a trademark in a country or organisation that is a member of the Madrid System. Since the EU has also acceded to the Madrid Protocol, a EUTM can serve as a basis for an international trademark registration that can cover, among others, also the USA.
The term of a EUTM registration is 10 years, right? How much does it cost to prolong a single EU registration versus three national registrations in the Baltics?
Yes, the term of legal protection of a EUTM is 10 years and it may be continuously renewed for another 10 years. The official fee for renewal of a EUTM in one class of goods and services is EUR 850. An additional fee of EUR 50 applies for a second class and EUR 150 for a third and each following class.
In the Baltic countries, too, trademark registrations must be renewed every 10 years. The official fee for renewal is EUR 180 in Lithuania for 1 class and EUR 40 for each additional class, EUR 180 in Latvia and EUR 195 in Estonia.