Trademark substance and processes are very similar in every country. The basics don’t change very much. However, there are many differences between the systems that applicant’s should know. Here are seven important and practical things a US company should know about EU trademarks.
1. It’s all or nothing
There are 28 countries (27 after Brexit) in the EU. In order to get the registration, the application must meet registrability conditions with respect to all of the countries. If EU trademark is granted, it covers the whole EU. If there’s a problem even with respect to one country (for example, the trademark is descriptive in Hungarian language), registration is refused for the whole EU. EU trademark covers either everything or nothing.
2. Unlike in the US, registration is the only way to get rights
EU does not recognize use based trademark rights. EU trademark rights can only be obtained by registering the trademark before the European Union Intellectual Property Office. Having said that, some individual countries recognize use based trademark rights, but usually there are additional requirements, such as that the mark as already acquired some degree of recognition. Mere use does not create rights in any EU country.
3. Unlike in the US, use of the mark is not necessary for obtaining rights
When applying for an EU trademark It is not necessary to indicate whether the trademark has already been used in commerce. Also, it is not necessary (in fact, not even possible) to indicate that the applicant intends to use the trademark in the future. As a consequence, the applicant is free to apply a trademark for all goods and services he wants regardless of whether he ever intends to use the mark for those goods and services. Also, registration is granted without the applicant having to prove that he has commenced use.
4. Classification is much more liberal than in the US
EUIPO accepts much broader and imprecise terms than the USPTO. For example, term “software” is accepted without any reference to its function or purpose of use. Often US companies file trademarks that Europeans would consider unnecessarily limited in terms of their scope. Conversely, EU companies often face the reverse problem in the US, where their classification is too broad and must be specified. This disadvantages US companies: they cannot expand their list after the application is filed, but EU companies can always narrow theirs.
5. Lightning fast examination
It is possible to have the trademark examined in less than a week. EUIPO has a special fast track procedure. The good thing is that it does not cost any extra. There are a couple of basic requirements, such as using the goods and services from EUIPO’s own database, and paying the government fee immediately. Most applications we file will go to fast track examination.
6. Unlike USPTO, the EUIPO does not examine prior trademarks
EUIPO does not examine what trademarks have been registered previously. If they consider the mark sufficiently distinctive, they will publish it for opposition. It is for the prior rights holders to monitor their rights and file oppositions if necessary. Approximately 15-20% of EU trademarks are opposed. The opposition is a written administrative proceeding and much cheaper than the opposition proceedings in the US. According to International Trademark Association’s survey, an EU opposition costs only a tiny fraction of the cost of the US opposition (3-5% of the US cost).
7. Direct EU or international registration
Direct EU application is many times advantageous. Madrid System imposes several limitations. The language options are more limited and the application is also restricted to the goods and services covered by the basic US mark. Also, when you used the Madrid System the process is much longer. With direct application, you can utilize a special “fast track” procedure to get the mark examined in about one week.
