The current trademark regulations in the European Union are mainly based on Directive 2008/95/EC of the European Parliament and the Council of October 22, 2008, on the harmonization and unification of the laws of the Member States relating to trademarks (amended on June 14, 2017, Directive 2017/1001). The European Union Intellectual Property Office is responsible for managing trademark affairs, and the official languages are English, French, German, Italian, and Spanish. Trademark exclusive rights need to be obtained through registration. Trademark registration is not mandatory, but in order to protect the trademark or renew it, it must be registered in accordance with the law. The EU trademark registration adopts the principle of "application first".
The European Union is a party to international intellectual property treaties such as the TRIPS Agreement, the WHO Framework Convention on Herbal Control, the Kiev Protocol to the Aarhus Treaty, the Convention on the Rights of Persons with Disabilities, and the Helsinki Water Convention. It has also joined the Madrid Protocol, so commercial registration can be processed through "EU Registration" or "Madrid International Registration".
At present, the European Union Intellectual Property Office adopts the Nice Classification 11th edition of goods and services descriptions and accepts applications for multiple categories in one form. The elements that can be registered as trademarks in the EU include: text, graphics, symbols, color combinations, three-dimensional shapes, sound, etc. Natural or legal persons who do not have a domicile, main place of business, or a genuine and valid business enterprise within a member state of the European Union must entrust a specialized agent in their region to handle the matter. The basic materials required for trademark application are:
1. Trademark design;
2. Category and specific product items;
3. Name and address of the applicant;
4.If priority is declared, proof of priority must be provided.
The main process for applying for registration of an EU trademark is: application → examination (absolute reasons) → announcement → registration and issuance of certificates. After receiving the application, the European Union Intellectual Property Office will conduct a formal examination and a substantive examination. The substantive examination only involves the examination of absolute reasons. At the same time, the European Union Intellectual Property Office will prepare an EU trademark search report and notify the prior trademark owners who may raise objections to this EU trademark application as a reference. After the examination is approved, the European Union Intellectual Property Office will publish the trademark application. The opposition period is three months from the date of publication, and any interested party or prior right holder may raise an objection. The main reasons for raising an objection are:
1. Prior trademark rights. The applied trademark and the trademark previously owned by the objector constitute the same or similar trademark, and the goods/services applied for belong to the same or similar goods/services as those specified in the prior rights trademark. The prior trademark referred to here includes the following trademarks with an application date earlier than the opposed trademark:
A. EU trademark;
B. Trademarks that have been applied for/registered in any member state of the European Union;
C. Apply for a valid trademark in any member state of the European Union through Madrid;
D. Apply for the designation of an EU trademark through Madrid.
2. Proxy organizations, representatives or distributors rush to register;
3. Trademarks and commercial signs previously used by the European Union but not registered;
4. Well known trademark. The grounds for objection require that the well-known trademark must be a well-known trademark of the European Union or a well-known trademark of any member state of the European Union. This objection reason is mainly used to object to identical or similar trademark applications on unrelated goods/services.
If there are no objections or objections are not valid during the announcement period, the European Intellectual Property Office will issue a registration certificate and arrange for registration announcement; It should be noted that currently the EU only issues electronic registration certificates and does not issue paper registration certificates. Electronic registration certificates are available for download on the EU official website.
In a smooth situation, EU trademark registration takes about 5 months; If things don't go smoothly and there are rejections or objections, the time will be extended, which may take 2-3 years.
The EU trademark is valid for 10 years after registration, starting from the date of application; Renewal can be processed within 6 months before the expiration date, with a grace period of 6 months; The renewal is valid for 10 years. The invalidation/revocation application after trademark registration can generally be filed in accordance with the following provisions of the EU Trademark Regulation:
1. Invalidation based on Articles 52 to 54 of the Trademark Regulations: (1) Violation of the prohibition clause; (2) The applicant has malicious intent when submitting the trademark application; (3) The prior trademark owner or the prior rights holder of name, portrait, copyright, industrial property, etc. makes an invalidation request;
2. According to Article 51 of the Trademark Regulations: (1) Without justifiable reasons, the trademark has not been actually used in the local area for five consecutive years after registration; (2) Becoming a generic name or shape; (3) The actual use of a trademark may lead to public misidentification of the nature, quality, and place of origin of goods/services.
The application for invalidation/revocation of a trademark must be submitted to the European Intellectual Property Office, which usually takes 1 and a half to 2 years. The respondent can generally provide the following evidence materials to respond to the revocation application filed by others on the grounds of "not used":
1. Invoice; Product catalog; Revenue evidence;
2. Packaging and decoration; label; quotation;
3. Advertising; Written statement; Market research results.