Let’s make that clear: if you are an attorney in the European Union, this article is not for you. If you are a serial applicant of European Union trademarks or serial “researcher” for filing in the European Union, this article is not for you. But if from China or Japan or the United States or Australia, because of your activity or because a client has asked you to search before filing a European Trademark Application for the first time, you might find these few lines interesting.
Unfortunately, let us admit it, the EU scenario is other than simple from the point of view of the trademark law. On the territory made up of the twenty-seven member states[1] coexist several trademark registers.
To the register of European Union Trademarks managed by the European Union Intellectual Property Office – EUIPO) [2] which includes trademarks (the European Trademark – EUTM) with validity throughout the Union, add on twenty-five national trademark registers, and a supranational register (the Benelux register). Those registers are managed by the national trademark and patent offices of each Member State of the Union and include national trademarks with validity in the territory of the member states issuing the registration, while the Benelux office includes trademarks with validity in the territory of Belgium, the Netherlands and Luxembourg.
All the above registers are enhanced by the constant contribution of international designations under the Madrid Protocol (the European Union and the member states of the Union, except for Malta, are members of the Madrid Protocol or the Madrid Agreement).
If this is not enough, let us not forget that each country has national trademark laws that may constitute under certain conditions distinctive signs capable of providing rights able to invalidate later EU trademarks such as unregistered trademarks, company names, domain names, signs, etc.[3]
The cultural and linguistic diversity of the European scenario is well known[4], but I do not want to focus on this aspect (which for sure contributes to the complexity of the system). What I would like to discuss in this short article is the delicate aspect of the management of relative grounds for refusal by EUIPO and National offices, which, as it may be easily inferred, has a strong impact on the execution of searches aimed to file a EUTM application.
A European Trademark application must be distinctive in all the territories in which it will have value but must also be in the position to overcome the risk of finding similar trademarks already registered not only in the EU Trademark Register but in all registers valid in the territory of the Union [5]. This is a crucial point to always remember. A search aimed to register a EUTM cannot be limited to just a few registers valid in the Union but must necessarily cover them all.
While this alone is a reason for the complexity of the search activity in the EU, the real issue is a different one: neither the EUIPO nor most of the EU member state’s trademark offices research their registers during the trademark registration process. In other words, trademark applications are examined ex-oficio only for absolute grounds for refusal and not for relative grounds for refusal (existence of prior rights) in most of the registers described above[6].
After the examination of the absolute grounds for refusal, the EUIPO, like most national offices, proceeds with the publication of the trademarks, leaving to the holders of similar rights (who have hopefully activated a trademark watch service), the burden of proceeding with the filing of oppositions aimed at barring the registration of the trademark.
To simplify, an application as a European Union trademark for COCA-COLA by an individual will never be followed by a refusal by the EUIPO for the presence of earlier trademarks owned by The Coca Cola Company (although this is well known). The Coca-Cola Company will have to intervene in opposition (within three months) once the infringing trademark application has been published. The same will happen if we file a COCA-COLA trademark application as a national trademark in France, Spain, or Italy.
I started working in this industry 20 years ago, and as a young professional, in love with the profession and full of passion, devoted to the defense of international clients with interests in Italy or the EU, and observing the world from a European perspective, I considered normal a system in which the opposition or intervention of third parties was the only tool to block the registration of third-party trademarks. As time went by and having started to follow larger and more complex portfolios with ramifications in all countries, I realized that it is exactly the opposite. Europe remains an exception compared to the rest of the world.
– The formidable task of a trademark search aimed to apply for a European Union trademark: the crowding of European trademark registers
Assuming that what I have written so far is clear, you will realize that the execution of a search to file a trademark in the EU is far from easy and it implies a series of considerations and evaluations that go far beyond the simple trademark legislation and the results from the trademark registers.
Without further investigating the aspects related to national specificities (language and case-law are different in all the member states), since the national offices do not substantially make any scrutiny to the filing of trademarks, it does not come as a surprise that (the relevant registers are overcrowded and not corresponding to the real market situations, and consequently to the real risks that a new application may be faced with.
This scenario is also the result of the fact that in Italy, for instance, as elsewhere, a good part of the application is still made without the assistance of trademark attorneys, and therefore it will hardly be accompanied by a prior trademark search and successive activation of trademark watch services.
It is easy to understand that in many cases oppositions that should defend prior marks are not filed simply because the holder of prior marks does not know about the infringing application.
The consequence is that there is an impressive number of trademarks highly similar or even identical coexisting on the registers and that theoretically are bases for opposition or action for cancellation of subsequent marks.
When doing a trademark search in Europe you are often confronted with results that provide for a series of identical trademarks coexisting on the same territory, all of which are potential obstacles to new applications if raised in opposition.
There are other complicating factors.
Before the IP Translator decision intervened in the European Union there was (has been) excessive use of class headings in the definition of goods and services because at least in some registers, the rule was “class-heading-cover-all” [7] and searches in classes such as class 9 (where fire extinguishers, safety shoes, glasses, electronic devices, etc. coexist) or in the notoriously unspecified classes of service, were real nightmares.
Furthermore, until 2017 official fees for filing a trademark in three classes at EUIPO were the same as filing in one class. This led to the consequence that many trademarks were filed for three classes when one would be enough to cover the interest of the applicant and the extra classes were filed for defensive reasons.
With the above in mind, if we take for example the US Trademark register, where the rule “use it or lose it” guarantees substantial “precision” between the trademark as filed and the trademark as in use, in Europe the situation is diametrically opposed and what you find in a register is not exactly what is in the market.
The above serves to say that in performing a trademark search for the filing of a trademark in Europe or more specifically for a European Union trademark, monitoring the trademark registers only is not enough and would entail the risks of rejecting trademarks which would have chances to be registered.
In the above scenario, an element of great simplification is the verification of the use of a trademark registered for more than 5 years or the evaluation of the business of the owners of the previous trademarks that have emerged.
If, for example, in performing a class 9 search for the filing of a trademark for an electronic product, we happen to come across identical or similar names registered to cover the class headings for more than 5 years from the date of registration, in the EU register or a register of the European Union, it will be highly important to assess whether the trademark is in use, for which products and what the business of the owner is.
Against trademarks that have not been in use for five years since the date of registration, the EU law provides two remedies. One of them is simple: the request for proof of use of the opposing trademark during the opposition proceedings already in place[8]. In case of opposition based on a trademark that is vulnerable for non-use, an opposed application may require the opponent to prove the use of the trademark. Failing evidence filed, or in case evidence of genuine use is not enough, the opposition is closed in favor of the applicant. The second remedy is the classic action for revocation for non-use. [9]
When performing a search, therefore, if we come across a trademark that is not used, it is highly likely that the owner will not oppose a new application at all (why filing an opposition based on a trademark that is not in use and therefore will be neutralized based on a request of proof of use in opposition?). If the trademark is in use for only part of the goods, the scope of the potential opposition will likely be limited to the products in use (and filing a strongly limited trademark would dodge the problem).
If, on the other hand, the trademark is not yet vulnerable to non-use, but we realize that the owner is active in a completely different business area than our client’s, the opposition is equally unlikely.
This type of assessment occurs with the aid of the information we collect on the Internet, and hopefully should be confirmed with investigations into the use. Certainly, in all cases, risks are being taken. Honestly, it is difficult to find marks free from similarity in all member states, but even here there are useful considerations that are to be made to be able to assess these risks.
Given what was stated so far, it is not surprising that trademark opposition is a rather routine (normal) event in the trademark registration process before the EUIPO. Looking at the statistics published by the EUIPO, the average rate of opposition to new applications received between 2010 and 2019 accounts for (is) 13%. Nonetheless, it must be recalled that the EUIPO opposition system offers a system to negotiate and to regulate the co-existence of trademarks in the register, the so-called “cooling-off” period, a period (max. two years) granted to the party in an opposition proceeding to negotiate the conflict and find a solution.
In the same period, it is very interesting to note that 63% of the oppositions filed were closed and settled during the negotiation and never went as far as to call for a decision. A way to solve a conflict is certainly the withdrawal of the opposed application. However, based on first-hand experience, we know that in many cases settlement is based on the limitation of goods and services or other kinds of agreement between the parties.
One may suspect that a EUTM registration is rather fragile as it is the result of a non-substantial examination, and therefore always exposed to the risk of cancellation from the register. However, statistics do not say so. If we look at the cancellation rate of trademarks registered between 2010 and 2019 at EUIPO a surprisingly average of 0.05% per year confirms that once a EUTM application passes the publication stage without opposition, it is very likely that the mark will remain stable.
There are useful things to know. The most attentive of you should have understood that opposition to the registration of a European Union trademark may originate either from another trademark of the European Union or from a national trademark of a member state.
It is, therefore, possible that a trademark may find obstacles to the registration as EUTM only in Italy, or Spain, or in small markets such as Malta or Cyprus. In these cases, it is necessary to keep in mind the interests and risks that the client is ready to take.
While an applicant may not necessarily have interests throughout the Union, and even though the free circulation of goods in the Union may undoubtedly pose risks, there could be the case when an applicant has main businesses in some Member States and fewer interests in others, for the most varied reasons (those who produce air conditioners may have far more relevant interests in Spain, France, Italy, Greece, rather than in Sweden, Denmark, Finland).
Well, in these cases, proceeding with full clearances aimed at certain countries and less in-depth clearence in others could work if we consider two tools provided by the EUTM regulations:
1. the conversion of the European Union trademark into national trademark applications;
2. the fact that national systems and above all the international trademark guarantee protection in part of the Union.
The conversion makes it possible to turn a European Union trademark (EUTM) application or registration into one or more national applications. If a EUTM ceases to exist, depending on the specific reason for this, it can be converted into trademarks that are valid in certain Member States. Conversion is particularly useful for overcoming possible problems with the EUTM’s unitary character. For example, if the EUTM faces a registrability problem in only one or several countries on absolute grounds or due to opposition based on an earlier right valid in only one country or several countries, the EUTM applicant can apply to convert the EUTM into individual, national trademark applications in the countries not affected by these grounds. It is an expensive tool as it implies to pay application fees in front of Member States national offices, however, sometimes it is a remedy which is worth considering to protect the client’s interest and fine-tune the search properly.
On the other hand, the coexistence of national trademarks with the Community system is a fact that sometimes must also be considered for one’s benefit.
Certainly, while the ambition to have a single right throughout the Union must be pursued, even with advanced clearance activities (trademark cancellation campaigns, acquisitions, coexistence agreements), when those resources are not viable, never forget that there are national trademark systems and the possibility of registering trademarks at a less extensive level than the Union’s.
Evaluating the alternatives outlined allows to carefully assess the research results.
Always remember that a European Trademark application may substitute national applications in all the member states of the Union, but also remember that besides conducting searches in the register of the European Trademark applications and registration, it is paramount verifying all the member states’ trademark registers.
Always remember that European registers are crowded because relative grounds for refusal are examined ex-oficio only in a few countries and to have a complete clearance activity you must take risks and consider other factors besides the mere citations that emerged in a trademark search such as the use of trademarks older than five years from registration, interests of the proprietor of the earlier trademarks cited by the searches.
Be aware that oppositions are quite normal in the registration system of a EU trademark, as it is the only way to have control on relative grounds. This having been said, always activate a trademark watching service in the EU, when you apply to protect your trademark, and at the same time, do not be scared if you receive an opposition, most oppositions are settled during the cooling off.
Finally, because the EUTM system always provides the safe escape of conversion and it coexists with national trademark rights, always remember to perform a complete clearance activity in that part of the Union where most business or interests reside.
While it is nice to enjoy protection throughout Europe, when that is not possible, the system also allows protection in certain Member States only.
About the Author
