Article 1, 2) of the Regulation n. 2017/1001 concerning registration of the European Union trademark provides:
“An EU trademark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, not shall its use be prohibited, save in respect of the whole Union. This principle shall apply unless otherwise provided for in this Regulation”
Let’s see what it specifically meant for “unitary character of the European Union trademark” and what are the steps for the registration of an EU trademark.
- The registration of the European Union trademark allows, through a single application filed with a single office (EUIPO in Alicante), to get protection in an area which includes all the States Member of the European Union.
In light of so called “principle of unity”, as set out in the above mentioned article, the effects of the EU trademark shall extend to all the States Member of the European Union and, in
case the mark ceases to have effect, it will be similarly not effective in all States of the European Union, being unable to explain its effects only in some Countries of the European Union but not in others. Thus, for example, the EU trademark cannot be declared invalid only in France and Poland and valid in the remaining States of the European Union or in any of them.
- The EU trademark application must be filed in one of the languages of the European Union with the indication of a second language, to be chosen among the five official of the EUIPO, namely English, French, Italian, German and Spanish.
- The EUIPO, after verified that the application meets formal requirements, the filing fees have been paid and that there are no absolute grounds for refusal
shall, at the request of the applicant for the EU trademark when filing the application, draw up a European Union search report (“EU search report”) citing those earlier EU trademarks or EU trademark applications discovered which may be invoked under Article 8 against the registration of the EU trademark applied for” (namely potentially conflicting signs: Article 43, 1) EU trademark Regulation 2017/1001).
- Where, at the time of filing the European Union trademark application, the applicant requests so, Trademark Offices of the member States of the European Union which gave their availability, are required to conduct a search on their respective National Trademark Registers.
- The Office shall transmit without delay to the applicant for the European Union trademark the EU search report and any requested national report received so that the applicant may evaluate the results.
- Then, if the Office does not issue any objection against the European Union trademark application, the latter shall be published in the Official Bulletin of the EU Trademark and third parties can file an opposition within three months from the date of publication.
- If an opposition is filed, after the formal examination of the opposition, the EUIPO grants the parties a period of time (which may be extended upon request of both parties up to a maxi-mum total of 24 months) for reaching an amicable agreement (cooling off period). If either of the parties wants the adversarial part of the proceedings to commence, they can opt out and inform the Office thereof unilaterally, without the consent of the other party (opting out).
- After the expiration of the cooling off period (or earlier, in case of opting out), the opposition starts, and the parties have the possibility to file grounds and evidences in support of their arguments.
- Against the decision of the Opposition Division is given the possibility to appeal to the Board of Appeal of the EUIPO. The decisions of the Boards of Appeal may be appealed to the General Court of the European Union, whose decisions can be appealed to the Court of Justice.
- According to the Article 51 of the European Union Trademark Regulation,
“When an application meets the requirements set out in this Regulation and where no notice of opposition has been giv-en…or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the trademark and the particulars referred to in Article 111(2) shall be recorded in the Register. The registration shall be published.”
If you wish to register an European Union trademark, Eva Troiani law firm is at your disposal to take care of the whole proceeding on your behalf.