Who is eligible to register EU trademarks?
Any individual or legal entity, including public authorities, has the right to register an EU trademark.
Does the government authority independently verify the grounds for registration refusal (e.g., through searches)?
The EUIPO (European Union Intellectual Property Office) does not conduct ex officio (by virtue or because of an office, the position held by the public authority or body) checks for relative grounds for refusal. However, they perform an EU search and notify holders of earlier similar EU trademarks that have chosen to publish their applications. Applicants opting for this search will receive a list of relevant conflicting earlier marks. Upon request during filing, national search reports from select offices are available for a fee.
What are the deadlines for filing for priority eligibility?
The Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification) defines a priority right of six months.
What is the opposition period for EU trademark applications?
Any interested party has three months from publishing a European Union trademark application to oppose it.
Can rejected applications be appealed, and what are the appeal procedures?
Any decision partially or entirely refusing (or revoking or else invalidating) an EU trademark application or registration can be appealed. The appellant must submit a written notice of appeal and pay the appeal fee within two months of receiving the contested decision. Further appeals can be pursued at the EU General Court and subsequently at the European Court of Justice.
The holder of an earlier EU trademark may oppose an application if they can demonstrate genuine use of the trademark in connection with the relevant goods or services during the five years prior to the filing date or priority date of the EU trademark application.
Can a trademark be cancelled for non-use?
Yes, any third party can initiate cancellation proceedings based on non-use if five years have elapsed since the EU trademark’s registration, and there is no need to demonstrate a legal interest.
Are there any legal protections available for unregistered trademarks at the EU level?
At the EU level, there are no protections available for unregistered trademarks.
Is it acceptable to use ® or TM?
Anyone can utilise the TM symbol to indicate that a word, phrase, image, etc., is being used as a trademark, regardless of whether it is officially registered.
Conversely, using the ® symbol signifies that the brand or trademark is registered. It is considered a criminal offence to falsely claim that a brand is registered when it is not.
Thus, it is crucial to emphasise that the ® symbol should only be employed after the trademark brand has been formally registered and you possess the certificate as evidence of registration.
I want to protect my logo in various EU countries. Which is more advantageous, separate national trademark registrations or a single EU registration? What are the advantages and disadvantages of each option?
Trademark rights have a territorial scope, meaning they are only enforceable in the country where the trademark is registered. Suppose you intend to protect your mark across multiple EU countries. In that case, a practical choice is to apply for a European Union trademark (EUTM) registered by the European Union Intellectual Property Office (EUIPO). A single EUTM registration provides trademark protection in all current and future EU Member States. Conversely, national trademark registrations protect only within the countries where they are registered.
Is EUTM registration still valid in the UK after Brexit?
EUTMs are no longer protected in the UK following its exit from the EU. Previously registered EUTMs remain protected and enforceable within the UK. Consequently, individuals who own EUTMs registered prior to the end of the transition period (December 31, 2020) have automatically been granted an identical trademark within UK jurisdiction.
In order to apply for a new trademark after Brexit, it is now required to have a separate registration in the UK, in addition to an EUTM registration.
To obtain trademark protection in the UK, you can either file a specific application for trademark registration or utilise the Madrid System.
What is more beneficial: EU or national trademark registration?
Registering an EUTM may be cost-effective compared to registering numerous national trademarks (depending on the number of trademarks to be registered). If you plan to use your brand in several EU countries, we recommend considering an EUTM registration.
However, both EUTM and national trademark registrations can be revoked or cancelled for various reasons, including non-use within five years after registration or due to prior trademark rights. In such cases, EUTM revocations or cancellations affect all EU countries, while national trademark revocations or cancellations apply only to the relevant country. Therefore, it is advisable to register national trademarks in key EU jurisdictions, predominantly if your business operates in just a few EU countries.
Which is more cost-effective: EU registration or national registration in the Czech Republic?
National registrations are generally cheaper than a single EUTM registration. The official fee for registering an EUTM in one class of goods and services is EUR 850, with additional fees for additional classes.
In comparison, for example, national trademark registration fees in the Czech Republic are as follows:
- 5,000 CZK for an application to register an individual trademark in three classes of goods or services.
- 10,000 CZK for an application to register a collective or certification trademark in three classes of goods and services.
- 500 CZK for each additional class of goods or services beyond three classes.
Initially, applying for national registrations may seem less costly, but costs increase as the number of national registrations grows. If your business operates across the EU, an EUTM registration may be more cost-effective.
Furthermore, if you use external trademark registration services, fees for multiple separate applications are likely to be higher than for a single EUTM application.
How can you protect your trademarks on products when exporting abroad? Does a trademark registered in the Czech Republic also apply abroad?
A trademark has territorial effects in the jurisdiction where it has been registered. To expand protection abroad, it is necessary to either file an international trademark application, an EU trademark application valid for all EU member states, or a national trademark application in the country where protection of the specific designation is sought.
Which is faster: the duration of EU registration compared to national registration in the Czech Republic?
The speed of EUTM registration varies based on factors such as trademark complexity and potential opposition from other trademark owners. EUTM registration may take from four months to two years. However, registration typically takes approximately 4-4.5 months (if there are no objections).
In the Czech Republic, the average processing time (assuming no significant complications arise with conflicting trademarks or other industrial property rights) from filing a trademark application to its registration in the registry maintained by the Industrial Property Office takes approximately six months. Consequently, EUTM registration may be faster and more efficient in the long run.
Please be advised that trademark protection begins from the filing date, not the registration date (provided the registration is successful), making the registration speed less decisive in choosing the right trademark registration option (EU or national).
Do I need any business permits to own a trademark in the Czech Republic?
Since April 1, 2004, when the new Trademark Act of the Czech Republic came into effect, it is no longer necessary for the applicant or owner of a trademark to have a business permit (such as a trade licence) for products and/or services. Any such permits are no longer required.
What can be registered as an EUTM? Can I register a smell or a sound as an EUTM?
EUTMs can encompass various signs, including words (including personal names), designs, letters, numerals, colours, shapes of goods, packaging of goods, or sounds. However, marks must meet specific requirements, such as being distinctive and not describing registered goods and services. While registering smells has been technically possible since 2017, it remains fairly challenging.
How does the EUTM registration process work, and what are the features for non-EEA residents?
EUTM applications must be filed exclusively with the EUIPO. You can submit an application through online registration (FastTrack) or more traditional means (by post or particular courier service).
Suppose you are an EUTM applicant without a domicile, principal place of business, or an accurate and effective industrial or commercial establishment within the European Economic Area. In that case, you must appoint a representative before or after receiving a formal deficiency letter from the EUIPO regarding representation. This representative must be a legal practitioner qualified in one of the European Economic Area’s member states, including the EU countries, Iceland, Liechtenstein, and Norway or a professional representative listed by the EUIPO.
Is it necessary for EUTM registration to be based on a national trademark registration? Is there a time frame within which EU registration depends on the national one?
No, a national trademark registration is not required for EUTM applications. However, you may use your national registration to claim priority, granting your EUTM an earlier protection date matching your national trademark’s filing date. You must claim priority within six months after the first national trademark filing, and it must be done simultaneously with the EUTM application. Consequently, it would help if you promptly decided whether to claim priority for your national trademark when applying for an EUTM.
What happens to an EU application if it is rejected in one of the countries?
If your trademark meets all requirements, the EUIPO registers it. Only the EUIPO has the authority to grant EUTM registrations; unlike international trademark registrations, individual EU Member States cannot oppose EU trademark registration.
My entity has a company name and has successfully operated in the market for five years, but we have not registered a trademark. Another company has registered an EUTM with a similar name and now demands that my company change its name. Is it legitimate, and can my company continue its operations without changing its name?
Since your company’s name was registered prior to the trademark with an identical name, the brand owner cannot file a lawsuit to invalidate your company’s name. This holds regardless of the scale of your company’s business activities because your rights to the company name were acquired through registration before the trademark was registered. It means that even if you are prohibited from using the registered brand on your website, for instance, due to another company’s trademark in the EU, you will still have the right to retain and continue using your company name (but not as a trademark).
However, please be advised that from a practical standpoint, this can be challenging since the legal distinction between using a particular brand as a company name or as a trademark is not explicit. Therefore, if you lose the trademark dispute, you will likely have to change your company’s name.
May I request the invalidation of a trademark if I have been using the same name/logo as my company’s trade name for a long time and well before its registration?
Yes, you can attempt to invalidate the trademark, arguing that it was registered unlawfully because it contradicts your prior trade name for identical or similar services. However, for this argument to be successful, you must prove that your trade name holds “more than mere local significance” in the country where the trademark owner operates.
National trade marks continue to be necessary for those undertakings which do not want protection of their trade marks at Union level, or which are unable to obtain Union-wide protection while national protection does not face any obstacles. It should be left to each person seeking trade mark protection to decide whether the protection is sought only as a national trademark in one or more Member States, or only as an EU trade mark, or both.
Is it necessary to use the mark before registering it as an EUTM and provide proof of use?
No, there is no prerequisite to demonstrate prior use of the mark before registering it as an EUTM.
The first party filing for an EUTM registration gains exclusive trademark rights. Therefore, avoiding using a trademark before registration can be advisable to prevent others from filing before you.
How can I enforce EUTM registration, for instance, if I discover an infringement of my trademark rights in the Czech Republic?
Initially, determine if your trademark is being used for identical or similar goods or services for which it is registered. Additionally, assess whether your trademark qualifies as well-known or has a good reputation under trademark law, protecting the registered goods and services.
We recommend assessing whether your trademark is actively employed for products or services that match or resemble those covered by your trademark registration. Alternatively, contemplate whether your trademark could be recognized as widely recognized or possess a favourable reputation according to the relevant trademark regulations. In such cases, your trademark would receive protection irrespective of the specific goods and services it’s officially registered for.
If your trademark rights are infringed, sending a cease-and-desist letter is a common initial step. If the infringer does not comply, you can seek remedies through national courts, including seizure of infringing goods, prohibition of further infringement, and compensation for damages.
In specific situations, you may involve the police in criminal or administrative proceedings against the infringer. While sending a cease-and-desist letter is not mandatory, it can lead to quicker and more cost-effective results.
Can the scope of EU registration be expanded to include, for instance, the USA?
Expanding EU registration to encompass the USA is not a viable option. To secure trademark protection in the USA, you must apply for state or federal registration or establish trademark rights under common law.
Nevertheless, you can leverage an EUTM as a foundation for international registration through the World Intellectual Property Organization (WIPO). To initiate an international trademark registration, you must have an existing trademark registered or applied for registration in a country or organisation that participates in the Madrid System (the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world). Given that the EU is now a member of the Madrid Protocol, an EUTM can serve as the basis for an international trademark registration that extends to various countries, including the USA.
The duration of an EUTM registration is indeed ten years. What is the cost of renewing a single EU registration compared to renewing a national registration in the Czech Republic?
The term of legal protection for an EUTM is ten years and can be renewed continuously for additional 10-year periods. The official renewal fee for an EUTM in one class of goods and services is EUR 850. An extra fee of EUR 50 applies for a second class, with EUR 150 for the third class onward.
In the Czech Republic, trademark registrations also require renewal every ten years.
Fees for an official renewal are as follows:
- 2,500 CZK for an individual trade mark;
- 5,000 CZK for renewal of the registration of a collective and certification trade mark;
- 5,000 CZK for renewal of the registration of an individual trade mark filed upon the expiry of the protective period, but at the latest within six months from that date;
- 10,000 CZK for renewal of the registration of a collective and certification trade mark filed upon the expiry of the protective period, but at the latest within six months from that date.
In conclusion, the process of trademark registration in the European Union (EU) and the Czech Republic involves various considerations and procedures. Whether you are interested in obtaining an EU trademark (EUTM) or a national trademark registration, it is crucial to understand the specific requirements and advantages associated with each option.
The COREDO team is well-equipped to assist you in navigating the complexities of trademark registration. We offer expertise in EUTM and national trademark registrations, providing tailored solutions to enforce and protect your intellectual property effectively. Whether you need to secure trademark rights within the EU, the Czech Republic, or other jurisdictions, we can guide you through the process, from application to enforcement.
Do not hesitate to reach out to us for comprehensive trademark registration services and expert guidance on your specific trademark needs. Protecting your brand is essential for long-term success, and we are here to support you in every step of the way.
By Dmitry Vyalkov, LLM, lawyer at COREDO