Will EU trademarks be valid in EU Member States, including overseas, after Brexit? Will EU trademarks be valid in UK after Brexit?
We are sharing an update regarding EU trademarks, covering frequently asked questions about EU trademarks in light of Brexit. If you are interested to learn more, please read more below.
I want to have my logo protected in a number of different EU countries. What is better – to have separate national trademark registrations or a single EU registration? What are the pros and cons of each?
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 a number of different EU countries, a good option is to apply for a European Union trademark (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. By comparison, national trademark registrations are protected only in the countries where they are registered.
Registering an 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 actually use your trademark in a number of different EU countries, we suggest registering an EUTM.
On the other hand, trademark registrations may be revoked due to non-use in the five years following registration, or be cancelled due to earlier trademark rights or for other reasons. This applies to both EUTM and national trademarks. If an EUTM registration is revoked or cancelled, this will apply to all EU countries. However, if a national trademark registration is revoked or cancelled, this applies only to the relevant 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.
For that reason, we often advise registering national trademarks in the most important jurisdictions in the EU and to have an EUTM registration in addition ‒ especially if your business is only developing and not yet present in several EU countries.
What is cheaper – for example, how much does EU registration cost compared to national registrations in the each of the three Baltic States?
Three national registrations are cheaper than a single EUTM registration. The official fee for registration of an 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 applies for a third and for each class thereafter.
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 in Estonia. An additional fee of EUR 30–45 (depending on the country) applies for each additional class after that.
Applying for national registrations may look appealing initially. However, the more national registrations you choose, the higher the price will be. Applying for an EUTM is cheaper than making several national trademark registrations ‒ especially if you are active or are planning to be active throughout much 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 – for example, how long does EU registration take compared to national registrations in each of the Baltic States?
The speed of EUTM registration depends on various factors such as the complexity of the trademark and potential opposition from other trademark owners. Due to this, the period of registration for an EUTM can be from four months to two 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 6–12 months. This means that registration of an EUTM can be faster and more efficient in the long run.
At the same time remember that trademark protection starts straight from the filing date and not from the registration date (provided that the trademark is indeed registered at the end of the process). Due to this, the speed of registration should not be a decisive factor in your choice of the most appropriate type of trademark.
Is EUTM registration valid in the territory of all EU Member States, including overseas regions?
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 and Guyana are included.
However, New Caledonia, Wallis and Futuna, French Polynesia, French Southern and Antarctic Territories, and Mayotte are excluded. In those regions, it is necessary to obtain a French trademark registration in order to be protected.
Portugal: the Azores and Madeira are included.
What can be registered as an EUTM? Can I register a smell or a sound as an EUTM?
An EUTM can consist of any signs, in particular words (including personal names), designs, letters, numerals, colours, the shape of goods, or the packaging of goods or sounds. A mark must also comply with certain other requirements: for example, it must have a distinctive meaning, so it cannot be descriptive of goods and services that it is registered for. As of 2017, the requirement of graphic representation 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 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 in paper form (by post or by special courier service).
Any trademark applicant can start the application process. However, an 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 has 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, this is not necessary. Unlike in the case of international trademark registrations you do not need a national trademark registration as a basis to apply for an 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 six months following the first filing of the national trademark and it must be done on the same date that the EUTM application is filed. For this reason, 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 an EUTM and prove this use to register it?
No, there is no requirement to show prior use of the mark before its registration as an EUTM.
The first person to file for an EUTM registration owns the exclusive right to the trademark. As a result, we would sometimes even advise you to avoid using a trademark before applying for registration to prevent a situation arising where another person likes your trademark and is quicker, filing for the trademark registration before you.
What happens to an 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 EU trademark registration.
How do I enforce EUTM registration – for example, if I see my trademark rights are being infringed in Latvia. What do I do?
First, you should check if your trademark is being used for goods or services that are identical or similar to the ones your trademark is registered for, or you should consider whether your trademark could be deemed to be well-known or to have 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 the 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., by 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 court or to the police is not mandatory, although doing so may offer a quicker and more cost-effective result.
Can I extend EU registration to cover, for example, the USA?
Such an extension is not 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 an 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, an EUTM can serve as a basis for an international trademark registration that can also cover the USA, among others.
The term of an EUTM registration is 10 years, right? How much does it cost to prolong a single EU registration compared to national registrations in each of the three Baltic States?
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 an 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 applies for a third class and for each class thereafter.
Trademark registrations must also be renewed every 10 years in the Baltic countries. The official fee for renewal is EUR 180 in Lithuania for one class and EUR 40 for each additional class thereafter, EUR 180 in Latvia, and EUR 195 in Estonia.
Is EUTM registration valid in the UK after Brexit?
With regard to Brexit, as a general rule, under EU law EUTMs are no longer protected in the UK as of the UK’s exit from the EU. The rules on continuity of protection of EUTMs in the UK can now be found in the “Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community”, alongside some other general rules found in the “EU-UK Trade and Cooperation Agreement”. Previously registered EUTMs continue to be protected and enforceable in the UK. Due to this fact, owners of EUTMs registered before the end of the transition period (31 December 2020) have been automatically granted a cloned UK trademark. However, further for certain actions appointment of a UK representative may be necessary. Those who have filed an EUTM application before the end of the transition period may apply for a trademark registration in UK within nine months of the end of transition period. Such UK trademarks will be afforded the same priority as an EUTM. As a result, we advise those who are still interested in protection of their trademarks in UK to act accordingly.
For any new trademark applications after Brexit, a separate UK registration is now necessary in addition to an EUTM registration. Trademark protection in UK can be obtained by filing an application for trademark registration in the UK specifically or by using the Madrid System.
In case of any further questions, please turn to our trademark specialists:
- In Estonia: partner Kaupo Lepasepp and senior associate Olivia Kranich.
- In Latvia: partners Ieva Andersone and Andris Tauriņš and senior associate Linda Reneslāce.
- In Lithuania: counsels Stasys Drazdauskas and Monika Mališauskaitė-Vaupšienė.
- In Belarus: partner Maksim Salahub and senior associate Marina Golovnitskaya.