What are the advantages and disadvantages of the EU trademark?
The European Union Trademark (formerly known as Community Trademark) is an interesting solution for a company planning to protect its trademark in Europe.
It is all the more appropriate because of the Internet and the resulting globalisation of trade. This brand has many advantages and some disadvantages. It is also questionable whether Brexit has an impact on the mark of the European Union.
The advantages of the European Union brand
The EU trademark offers significant benefits to keep in mind.
A unitary title
By filing a trademark application with theEuropean Union Intellectual Property Office (EUIPO), the holder can protect his sign throughout the European Union. Indeed, the EU trademark is a unitary title whose protection extends to all the countries of the European Union, i.e. the 28 Member States.
A single review
It is subject to a single examination by EUIPO. This Office receives the application, studies it and registers the mark within 6 months if it meets all the criteria. The EU trademark does not "undergo" a review in each of the 28 countries. Once registered, it is protected for 10 years and is renewable indefinitely.
Very affordable taxes
Compared to a trademark application filed in each of the EU countries, the fees charged by EUIPO are very low in relation to the scope of protection.
On the other hand, they have recently decreased, as EUIPO has opted for the system of one fee per class (and more than one fee for the first 3 classes). 850 for one class, EUR 50 for the second class and EUR 150 for each additional class.
While the European brand has many positive points, it also has disadvantages.
Disadvantages of the European Union Trademark
The EU trademark knows a few pitfalls.
A high risk of opposition
Given its "unitary" nature, the EU trademark may not be registered if it is the subject of an opposition by the holder of an earlier national right. For example, if a Polish proprietor believes that an EU trademark infringes his rights, he can oppose it before EUIPO and obtain its total or partial rejection.
This therefore considerably increases the risk of opposition since the prior rights opposable to an EU trademark are all national trademarks of the 28 EU countries, other EU trademarks, as well as all international trademarks targeting the EU or any of the 28 countries of the Union. That is a lot.
The flip side of the unitary title
If a European trademark is rejected or cancelled, it disappears completely. This means that it falls for the 28 countries of the European Union, and not only for the country from which the earlier right against it originated, if any.
Fortunately, this situation has been foreseen by the EUIPO, which allows a procedure for the conversion of the European trademark into national trademarks. To do so, a conversion fee must be paid to the EUIPO and then the countries in which protection is to be retained must be selected. These countries will also request payment of their own fees and carry out their own examination. The holder will then obtain national registration certificates for the countries in which the procedure has been completed.
When one registers a European trademark, the question of Brexit and its effect on that trademark necessarily arises.
The brand of the European Union versus Brexit
The problem with Brexit is whether or not EU trademarks already registered will continue to have effect in the UK. As the question has not yet been decided, several solutions can be imagined:
- The United Kingdom remains in the European Union's trademark system, despite Brexit: this is the most secure solution for owners, who would not have to worry about the continuity of their rights.
- The United Kingdom is coming out of the European Union trademark system: future European trademark registrations will therefore no longer cover this territory, which will have to be targeted differently (national trademark or international trademark). What about European trademarks already filed/registered?
- The worst-case scenario is to decree that European brands are no longer effective in the UK, retroactively. This scenario seems relatively unlikely as it would create a great deal of legal uncertainty for UK trademark owners (many of whom are UK nationals) and probably an unmanageable wave of lawsuits.
- The most credible scenario is to set up a procedure for the conversion of European trademarks into national trademarks in the United Kingdom for those proprietors who wish to do so. Probably in return for the payment of fees.
- Another avenue to be explored could be to set a date from which new European brands do not cover the UK. And before that date, no change. This solution would undoubtedly pose structural problems because European trademark courts would have to remain in the UK, and judges would probably be obliged to apply "two-tier" justice, sometimes using European rules when an EU trademark is involved, sometimes not.
Registering a European trademark is affordable but presents greater risks of rejection. It must be part of a well-considered protection strategy. Do not hesitate to contact us to determine if it is relevant to your project!