PROCEDURE FOR REGISTRATION OF EUROPEAN TRADEMARK
PROCEDURE FOR REGISTRATION OF EUROPEAN TRADEMARK (EUTM)
- Applying for an EU trade mark
An application for a European trademark contains: the request for registration of Community Trademark (CTM); the data of the applicant; representation of the image for which registration will be requested; the claimed list of classes of goods and/or services; a document for paid fees upon submission of the application, which are formed on the basis of the type of the mark and the number of the indicated classes.
- Check of the formal admissibility of the application
At this stage, it is checked whether the requirements for setting a priority date (of filing) are met. A check is made for the formal admissibility of the application for European Trademark (EUTM), which includes the more important aspects of the content of the application; the payment of the due fee for filing an application for a EU trademak; appointment of a representative (European Trademark lawyer); up-to-date list of goods and/or services. The absolute grounds for refusal examine in particular the possibilities of whether the submitted sign will be able to perform the functions of a trademark. At this stage of the procedure, the expertise may oppose to some of the indicated goods and/or services, as well as to the sign itself. Amendments or limitation may be requested for part of the listed goods and/or services. These requirements towards the identified deficiencies in the application may prolong the EUTM registration procedure for a certain period of time.
Publication of the application for European Trademark (EUTM) and start of the opposition period
The publication of each application for registration of EU trade mark indicates the claimed image of EU trade mark and as well as the list of goods and/or services.
Within three months from the date of publication of the European Trademark application, any person has the opportunity to lodge an objection against its registration, on the basis of the absolute grounds. In addition, during the same three-month period, holders of earlier rights (with an earlier priority date) over filed or registered trademarks operating somewhere in the territory of the European Union may also, at their decision, on the basis of the relative grounds for refusal stipulated in the Regulation, oppose against the registration of the filed mark for all or part of the listed goods and/or services. All this happens in the so-called opposition period, which is always three months and cannot be changed. Please, note that the obligation to monitor and file oppositions against the registration of filed EU trademarks, which are considered to be identical or with a high degree of similarity to previously filed and/or registered trademarks, lies entirely on the proprietors of these earlier rights. The European Trademark Office (EUIPO) is not obliged to carry out an examination for the existence of such grounds.
- End of the opposition period
The opposition period (preliminary objections against the registration) is three months from the publication of the application for EU trademark (EUTM). Provided that no opposition has been lodged against the registration of the specific European trade mark application, the application is deemed to be registrable and admissible. Please, note that in cases where there are preliminary objections or oppositions, the term of the registration procedure can be further extended by about 1-2 years.
- Registration of a European trademark (EUTM) and issuance of a protection documentEUTM) и издаване на защитен документ
When the European trademark (EUTM) is registered, a second publication and entry in the EU Trademark Register of the European Trademark and Design Office - EUIPO is made. A certificate for registration is issued to the holder of the European Trademark (EUTM). The rights over the trademark of the EU are acquired for a period of 10 years, which always starts from the date of the filing (priority date) of the application.
- Obligation for use of an already registered European trademark (EUTM)EUTM)
The successful conclusion of the European trademark registration procedure does not end its protection. The non-used European trademarks can sometimes become an additional barrier for the registration of later EU trademarks. For this reason, logically the obligation for use of the already registered European trademarks is provided. At the same time, the owners of already active European trademarks are provided with the so-called grace period after their registration before the obligation to use is set. The EU Trademark Regulation stipulates that if, within five years of the registration of a European trademark, the proprietor has not started its actual use in the trade turnover within the European Union, in connection of the goods and/or services for which it is registered, and if such use has been suspended for a continuous period of five years, the registration of the EU trade mark may be canceled at the request of any interested person, unless there are reasonable grounds for the non-use. Therefore, after the expiry of the 5-year period set out in the Regulation, the protection of the European trademark (EUTM) may be reduced practically to the goods and/or services for which have been proved that the mark has actually been used. Concerning the rest of the goods and/or services for which the trade mark has been registered but practically their use have not been proved, they may be excluded from the scope of protection, as they have no valid reason to continue to be present in the EU trademark exclusive rights. This restriction is not implemented ex officio by the Office, but only on the basis of a challenge (with claim proceedings) by third interested parties, usually applicants of later marks.
- Monitoring of a registered European trademark (EUTM) and its protectionEUTM) и нейната защита
With the registration of the EU trade mark (EUTM) does not end the obligation of the holder to protect it. The European trademark owners need to undertake subsequent action for the mark protection resultant of their exclusive rights. This is because they are not applied ex officio by the Office or law enforcement agencies towards the infringers. Therefore, the use in the trade turnover or the attempts for registration of identical or highly similar trademarks from different competitors in the industry need to be constantly monitored and opposed in a timely manner in order to avoid impairment of the reputation and possible financial losses. The monitoring of the registered and effective European trademark and taking timely and adequate measures to protect it, save money and time invested in creating the image of the EU trademark on the relevant market.
- Renewal of the registration of a European Trademark (EUTM)
The registration term of the European Trademark is 10 years from the date on which the application is filed at the Office (EUIPO). This is the so-called priority date and it plays a significant role in many possible future disputes. The validity of the registration can be renewed an indefinitely for subsequent periods of 10 years. This is possible only if the due fees are paid duly before the expiry of the last effective term of protection of the EU trademark. The costs of renewing a European trademark are based on the desired protected classes in the list of the specified goods and/or services. The omission of the deadline for renewal of an EU registered trademark can be corrected within 6 months term after the date of expiration of the regular 10-year term, by paying an additional fee. However, the omission of this grace period, will automatically lead to the final expiry of the European Trademark. As a result, the legal protection will be terminated. Following the expiration of the registration of such a mark, any interested person will be able to use or register it for himself as an EU trademark without infringing existing earlier rights.
NOTE:
These deadlines are approximate and calculated from the date of submission of the application to EUIPO.
