How UK businesses and individuals can apply for an EU trade mark post-Brexit

Important note: Citizen Avocats has produced this article as part of our collaboration. The contents do not constitute legal advice by SO Legal and are not intended as a substitute for legal advice.

Introduction

A European Union trade mark (EUTM) is a trade mark registered, or pending registration, in the European Union as a whole (as opposed to national trade marks). 

The administration competent to control applications, register EUTMs, and oversee related disputes, is the European Union Intellectual Property Office (EUIPO). Based in Alicante in Spain, it works in close collaboration with national IP agencies, such as the French Institut National de la Propriété Intellectuelle, to assure the harmonious protection of IP rights in the Union.

This article describes how UK businesses and individuals can apply for a EUTM. It also emphasises an important change caused by Brexit as to their proceedings before the EUIPO.

1. The broad IP protection granted by European Union trade marks

As a reminder, a EUTM grants IP protection over a mark for the trade of goods and/or the provision of services, within the entire Union, for a renewable period of 10 years. 

Every EUTM has a unitary character within all 27 member states during this protection period. 

This basically means that once registered, the EUTM cannot “be transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, [nor can] its use be prohibited, save in respect of the whole Union” (EU Trade Mark Regulation 2017/1001 of 14 June 2017, Art. 1).

The range of signs which can be protected as a EUTM is broad. According to Art. 4 of the EU Trade Mark Regulation 2017/1001 (“the Regulation”): 

“an EU trade mark may consist of any sign, in partia decisionds, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

Distinguishing the goods or services of one undertaking from those of other undertakings; and

(b) being represented on the Register of European Union trade marks (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

This unitary IP protection granted over a very large and relevant market, is a real asset for those who trade in Europe. Effectively, their EUTMs guarantee, within the entire Union, that no one, especially no competitor, will be able to infringe upon their mark. Such prohibited infringements can consist of using in the course of trade:

• Identical signs than those protected, in relation to identical goods or services to those for which the EUTM was granted;
   
• Identical or similar signs or signs likely to confuse the public used in relation to identical or similar goods and services;
   
• Identical or similar signs which, although not used in relation to identical or similar goods and services, may suffice to take unfair advantage of or be detrimental to the proprietor’s established repute.

UK businesses involved in European trade thus have a great interest in assuring that their distinctive features be protected from infringements in the EU territory.

Since the end of the transition period (31 December 2020), they should keep in mind that they must now separately apply in the UK and the EU to have their mark protected in both territories. Indeed, the UK having left the EU, an application with the EUIPO will not protect them in their home country. A fortiori, an application with the UKIPO will not grant rights in the EU.

Nevertheless, in the pursuit of a smooth transition, UK persons who were already proprietors of a EUTM before 31 December 2020 have automatically been allocated UK comparable rights.

2. Any company, including those incorporated outside of the EU, may apply for European Union trade marks

It is not required for EUTM applicants to be incorporated in, or nationals of, a member state in order to apply for a EUTM. Indeed, “any natural or legal person[…] may be the proprietor of an EU trade mark” (Art.5 of the Regulation). 

Therefore, EUTM applications are still open to UK companies and nationals.

As reminded above, the transition period, during which EU law(including the Regulation) still applied to the UK, ended on 31 December 2020. 

Gladly, the validity of EUTMs granted to UK persons prior to Brexit was not affected by the departure.

On the other hand, substantial changes occurred as to how new UK-originating applications can be made and how UK holders of existing EUTMs must be represented for any proceedings, before the EUIPO.

3. Changes affecting the recourse to professional representatives before the EUIPO

In principle, trade marks cannot be compelled to be represented for their filings and proceedings before the EUIPO. 

As an exception to this rule, “natural or legal persons having neither their domicile nor their place of business or a real and effective industrial or commercial establishment in the European Economic Area shall be represented before the Office […] in all proceedings provided for by this Regulation, other than the filing of an application for an EU trade mark” (Art. 119 of the Regulation).

Hence, it is now mandatory for UK persons to be represented before the Office for any matter other than the application.

EUTM applications and procedures are quite technical (e.g. the list of goods and services for which the IP protection is sought demands a great level of care). It is more than recommendable for applicants to recourse to a “professional representative”. Such a representative indeed acts as an agent for the applicants and an intermediary between them and the EUIPO.

Yet, precisely, professional representatives can only be:

• A legal practitioner qualified in one of the member states and having his place of business within the European Economic Area, provided that, in his member state, he is allowed to act before the national IP office (as is the case of Avocats in France);
   
• Professional representatives whose names appear on a special list of the EUIPO.

Hence, one of the significant changes brought by Brexit as to EUTM is that UK companies will not be entitled to be represented before the EUIPO by a UK-based professional anymore. They will have to hire a professional qualified in the EU and working from the EEA.

4. How to file a European Union trade mark application: A brief guide

Filing a EUTM application is a technical process. Although it can be made online in a relatively short time, there are several important steps and formalities which must not be overlooked. The most important ones are briefly described below.

4.1. Preliminary checks and validity assessment

Before filing the application, it is fundamental to determine what goods and services (as listed in the Nice and Vienna classifications) will be covered by the EUTM. The list should be very specific and comprehensive, yet not too broad, so the EUTM does not become vulnerable to attacks. A fine balance must be reached.

Once the list is established, preliminary checks must be undertaken regarding the main characteristics of the mark. It is indeed necessary to make sure that:

• The mark corresponds to the identity of the business, and, to the extent possible, it will still do ten years from now;
   
• The mark will effectively be used in the course of the business, and it matches its marketing strategy;
   
• The mark does indeed fall into one of the categories of signs accepted by the EUIPO;
   
• The mark is truly distinctive, not merely descriptive;
   
• The mark is not susceptible to trigger examination refusal; and
   
• The list of goods and services corresponds to those which will/may effectively be traded under the mark.
   

4.2.EU-wide anteriority check

It is important to remember that, under Art. 11 of the Regulation, “the rights conferred by an EU trade mark shall prevail against third parties from the date of publication of the registration of the trade mark”. 

Therefore, it is essential to ensure that no similar or comparable EUTM was registered or pending before making the application. 

This anteriority check must be made on an EU-wide basis. Some useful tools exist to facilitate this search, such as TM view.

For example, Citizen’s anteriority checks for a traditional figurative mark generally cover:

• The level of EU availability of the logo for the full name and parts only of the mark name; and
   
• The level of EU availability of the mark name and parts only of the mark name; and
   
• The list of goods and services for which issues of availability for the above have arisen.

4.3. European Union trade mark application per se

Once the two first steps above are completed, it is time to file the EUTM application per se. This is done online, directly on the EUIPO website. 

Depending on the level of complexity of the application, several forms are available. 

For individuals and businesses who chose to file their application themselves (it is usually the case when they have an in-house lawyer or IP professional) the EUIPO proposes the “Easy Filing Form”, which uses the standardised “Fast track” system (this first option being reserved to word or figurative trade marks only). 

On the other hand, the “Five-Step Form” and the “Advanced Form” allow for a more sophisticated and tailored approach.

No EUTM application is complete unless the EUIPO fees have been paid. These are quite costly, as the standard application fee charged by the EUIPO amounts to €850 for one class of goods and services. Each additional class incurs additional costs of €50 (and €150 from third class onwards).

The EUIPO will only start examining the application once payment is made. This first administrative processing usually takes a little bit less than a month and ends with the publication of the EUTM application. This publication, although it does not equal to the final registration and publication of the EUTM, is really what will allow the future proprietor to claim anteriority concerning third parties.

4.4. Publication of the application by the EUIPO and 3-month opposition phase

Provided that the EUIPO, as a result of its examination, does consider the application admissible, it will make it public. Consequently, third parties will have three months to oppose and raise claims against the application. 

Article 46 of the Regulation indeed allows proprietors of earlier trade marks (whether EUTMs, national trade marks, or other trade marks having effect in the Union) to notify their opposition to the registration of the EUTM by the EUIPO. They can do that on the grounds that:

• It is identical with their earlier trade mark and the goods and services it protects; or
   
• It is identical or similar to their earlier trade mark and the goods and services it protects, and, as such, it is likely to create confusion on the part of the public in the territory where the earlier TM is protected. 
   

4.5. European Union trade mark registration and publication

On expiry of the 3-month opposition period, the EUIPO will undertake some final verifications (for about two to three weeks). If it is satisfied that all conditions are met for an EUTM to be granted, it shall officially register the EUTM and publish such registration. The applicant then receives his certificate of registration, which constitutes the legal title of proprietorship and guarantees IP protection for the next ten years in the Union.

Once registered and published, the EUTM will need to be genuinely used by its proprietor, within the EU and within five years after registration. Otherwise, the rights would be in jeopardy:

• Third parties could initiate non-use cancellation actions;
   
• The proprietor could diminish its own capacity to attack third parties for infringement of its EUTM;
   
• The proprietor could impair its capacity to extend IP protection to other territories.

Therefore, it is important to remember that if and when the EUTM is granted, the proprietor should not satisfy itself with mere protective use of its trade mark but should rather use it as a genuine part of its European business. 

To put it shortly, according to the European Court of Justice, “genuine use” means, inter alia:

• an actual use of the mark;
   
• a use which purpose is not solely to preserve the right; and
   
• a use of the mark on the market for the goods & services protected by the mark.

Conclusions on European Union trade marks for UK businesses and individuals

Getting your UK trade mark registered within the entire European Union offers strong and broad protection. This is a question UK businesses and entrepreneurs involved in European trade should really ask themselves to guarantee that their IP is secured from infringements on the continent. 

Although the level of fees charged by the EUIPO can seem quite high, one should remember that the IP protection granted is one of the largest in the world. 

Furthermore, the effective use of the EUTM within the Union does not oblige its proprietor to trade under his trade mark in every single member state. 

Therefore, registering a EUTM might be a sensible investment, from the start of the activities in one member state, to facilitate a progressive extension towards other member states thereafter.

Looking to make an EU trade mark application?

SO Legal has an exclusive collaboration with French law firm Citizen Avocats. The agreement affords our clients greater access to legal expertise in France and the EU while giving Citizen's clients enhanced access to our specialist legal services in the UK. Find out more here.

Citizen Avocats' expertise includes various areas, including advising UK businesses on company formations, business acquisitions, business disposals, corporate structures, EU trade mark applications, and intellectual property matters.

For more information on the collaboration between the two law firms, contact Hamed Ovaisi at hovaisi@solegal.co.uk or Simon Deceuninck at s.deceuninck@citizenavocats.com.