www.trademarks.nl - European Union

European Union

Coverage
From 1 April 1996 registration of trademarks for the entire European Union is possible at the European trademarks Office (OHIM). The European Union presently covers Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom (England, Northern Ireland, Scotland, Wales, the Isle of Man) . Existing Community Trademark registrations automatically extended to the new member states that have adhered to the Union.

Costs & savings
The official fees for obtaining a Community trademark Registration (application and registration fees) have originally been set at a rather high lever but has been reduced already once and a further reduction is expected. Still, it is rather high compared to that of other countries. Nevertheless, savings by obtaining a EU-registration may run into thousands of dollars, as national registrations in all EU-countries are no longer required. The fees are payable in two instalments, the first upon application, the second upon registration.

Alternatives
Nevertheless, the possibility of national registrations should not be entirely disregarded if there is only an interest in a limited number of European countries.
A registration under the Madrid Convention or Madrid Protocol may also cover all European Union countries, separately or in whole (and many more). However, that system may not be available to you. Let us know which are your countries of interest and we will gladly provide you with a cost comparison, at no costs to you. (Use the form below.)

Priority & seniority
Priority under the Paris Convention may be claimed. This requires the filing of the application within six months from the first application of the same mark elsewhere.
Rights that exist in national registrations or international registrations under the Madrid Convention or Protocol may be claimed in an European trademark. This seniority claim may be made at the time of filing, but also at any later occasion. The inclusion of prior rights in the Community registration will increase its value and at the same time reduce the costs of maintaining the other registrations.

Classification
The International Classification has been adopted. An application may contain any number of classes upon payment of an additional fee for each class over the third.

Language
The application may be filed in any of the many European official languages A second language must be indicated, which must be one of the languages of the Office (English, French, German, Italian or Spanish). OHIM will use only the language of the application or the Office language if so requested. If opposition is filed, the language of procedure is the Office language. To reduce the chances of proceedings in a language foreign to the applicant (and to limit the translation expenses that are a result thereof), we suggest to file in a non-Office language (e.g. Dutch).

Procedure
OHIM examines applications as to form and inherent registrability. It will also prepare a search report listing possible conflicting Community trademark rights. The national trademark offices of the Member States (except for France, Germany, Italy and some others) will also issue search reports on the basis of their own trademark registers. These search reports will be forwarded to the applicant, but this will be for his own information only. No refusal shall be based thereon. OHIM will notify the owners of prior Community trademark registrations listed in the search report, but it will not notify owners of earlier national rights. Therefore, trademark watching remains essential.

Opposition
Within 3 months of the publication in the Official Gazette, owners of earlier rights may file with OHIM an opposition against a Community trademark application.
The losing party in an opposition will be required to pay the winner's opposition costs. This would prevent - it was hoped - the filing of 'automatic' or less founded oppositions. Unfortunately, however, to date some 20 per cent of published applications are subjected to oppositions. It has also appeared that many losing parties do not care to pay the costs, which are limited to EURO 600 anyway. Most winning parties do not bother to collect this limited amount in a foreign country since the collection costs would easily exceed the amount to be collected. Although OHIM has been found to be rather strict in judging oppositions, the system seems to work to satisfaction.

Use
A Community trademark registration may be attacked if the mark is not used without a valid reason for any period of five years from the date of registration. Subsequent use may cure the defect. Use of a Community trademark in any EU member country will be sufficient to satisfy the user requirement for all member countries. This may be one reason to prefer a Community trademark registration over national registrations or registrations under the Madrid Convention or Protocol. Use only for export also constitutes valid use.

Other features

If the European application or registration is successfully opposed or cancelled in one of the countries, or is lacking distinctiveness in only a part of the Union, the entire application or registration is affected. Nevertheless, the application or registration may then be converted into national applications/registrations.
Assignment or transfer of the registration is only possible in respect of the entire European Union. Transfer in respect of part of the goods and/or services remains possible, however. Assignment and transfer must be recorded to be effective against third parties.
Licenses may be granted in respect of part of the goods and/or services and in respect of the whole or part of the EU. They must be recorded at the Office to be effective against third parties.
Parallel or gray imports may be stopped at the European borders. Once, however, validly put onto the market by the trademark owner in one country of the EER - European Union + Norway, Liechtenstein or Iceland - (e.g. by a licensee), it is no longer possible to stop the free flow of the products to another European country.
Decisions of the Office may be appealed to a Board of Appeals. Further appeal will be available to the European Court of Justice.
Actions for infringement of a Community trademark registration may be brought before the designated national Community Trademark courts in the member country in which the infringement occurred, or, in order: the EU defendants' country of domicile, or of establishment, the EU plaintiff's country of domicile or of establishment, and Spain (home of the Office), unless the parties agree differently.
Registrations under the EU will remain valid for 10 years from the date of filing, indefinitely renewable for similar periods.

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