Trademarks in the EU

TMs can be registered as EUTMs if they help distinguish an enterprise's services/products from those of other companies. Registering TMs in the EU requires meeting several important criteria, such as clarity, preciseness, ease of accessibility, understandability, durability, objectiveness, unambiguousness & consistency.

EUTMs can consist of one or more of these:

• letters & words;
• abbreviations;
• numbers;
• names;
• motos & short phrases;
• colors & their combinations;
• designs, including 3D ones;
• shape, packaging or presentation;
• company & distinctive names;
• design & design patterns;
• color schemes
• collective marks and certification marks.

EU: Why Can Registration Be Rejected?

Grounds for rejecting an EUTM application include:

• lack of distinctive features
• contradictoriness;
• deceptiveness or excessive generalization.

Also, TMs may not be registered if they are similar to:

• designation of origin;
• geographical names;
• traditional wine terms;
• traditional food or plant varieties protected under EU law or international treaties.

A decision to refuse to register a TM in the EU must be based on the goods or services for which an application is filed & a TM’s public perception. Although the criteria are the same for all types of TMs, public perception may differ for some of them. Due to the cultural or linguistic differences existing between EU member states, a TM may be descriptive/conventional or may not be distinctive in some EU countries. A TM can only be registered if no objections are raised in any of the EU member states. Consequently, if a TM is descriptive in only one member state, it can't be eligible for registration.

Registration Procedure

An application for EUTM registration can be submitted in electronic or written form, faxed or mailed. The application must contain:

• information about an applicant;
• information about an applicant’s representative, including a PoA;
• information about services/products associated with a TM.

Submitting an application for TM registration in the EU requires appointing a professional representative. A PoA & application require no legalization, certification or notarization.

If a TM consists of colors, they must be identified by referencing a generally accepted color index. If a TM includes abstract elements, they must be identified by referring to the EUIPO FCG.

Applications are evaluated by one specialist. If they find an application acceptable, it’s published on the EUIPO website. Once published, applications are open for objection for three months. If there’s no objection, the EUIPO may proceed with registering a TM in the EU. 

Normally, the entire process takes four months. A decision to reject an application may be appealed with the EUIPO’s AB within two months after a notification is forwarded to an applicant.

Cancellation of TMs in the EU

A registered EUTM mark may be canceled if:

• a TM hasn’t been used for 5 straight years without a valid reason;
• a TM has become (due to its owner’s action or inaction) a common name in trading in services/products it’s registered for;
• a TM (due to being used by its owner) has come to mislead the general public.