European Union Trade Mark (EUTM) will be the main trade mark registration form in the future in the European Union. With the registration of a EUTM, one can obtain trade mark protection for its sign for the whole territory of the 28 Member States of the European Union in one proceeding. In our opinion, the funds available for industrial property and brand protection should be concentrated at the European Union level.

EUTM-s (previously CTM-s) have been registered since 1996 by the European Union Intellectual Property Office (EUIPO, previously: Office for Harmonization in the Internal Market), (www.euipo.europa.eu) seated in Alicante, Spain. European Union Trade Marks registered by EUIPO are valid in all Member States of the European Union automatically, irrespective of national trade marks and national trade mark offices. A EUTM application shall be submitted directly to EUIPO.

Since the European Union is a member of the Madrid System as of 2004, a  European Union Trade Mark can also serve as a basis for an international registration. Similarly, an application for an international trade mark can include the territory of the European Union as a whole. Thus, if somebody has already submitted an application for registration of a European Union Trade Mark or already has a registered European Union Trade Mark and intends to obtain trade mark protection outside of the territory of the European Union, he/she can proceed based on the application or existing registration. Similarly, it is sufficient to tick the European Union instead of all of its Member States in an application for an international trade mark. In that case, the application will be examined by the EUIPO.

Our law firm continuously monitors what’s going on in the world of European Union Trade Marks, with special regard to the judgments of the European Court of Justice. Nevertheless, the practice of the EUIPO is often more important for an applicant as this will be decisive in the question of the registrability of a particular sign. Consequently, our law firm puts special emphasis on tracking any changes in EUIPO’s practice.

Three types of proceedings exist in first instance before EUIPO:

a) absolute grounds for refusal, b) relative grounds for refusal, as well as c) revocation and invalidity.

• An absolute grounds case occurs when an application for a European Union Trade Mark conflicts with one or more absolute grounds for refusal (for instance, it is descriptive or non-distinctive). In this case, EUIPO informs the applicant about the obstacle to the registrability and invites the applicant to submit observations.

• If the EUTM application is eligible for registration, or the applicant proved that the sign has acquired distinctiveness through use, the trade mark application will be published in the EUIPO Bulletin. Any third party who has an earlier sign or trade mark which is identical or similar to the application in connection with identical or similar goods and services (or in some cases, dissimilar goods and services) may file an opposition against the application within 3 months calculated from the publication of the EUTM application. These are so-called relative grounds cases. In such cases, the proceedings will be bilateral and the parties can argue in turn whether there is likelihood of confusion between the application and the earlier sign(s).

• A claim for invalidity may be submitted if absolute or relative grounds turn up in connection with an already registered EUTM or it contradicts one’s right to a name, right of personal portrayal, copyright or any other industrial property right. The request for revocation of a registered European Union Trade Mark may be submitted if the trade mark has not been put to genuine use within a continuous period of five years in connection with the goods or services in respect of which it is registered.