Trade Mark Registrations EU - The Process
This article will discuss the process that an application in the EU must go through in order to acquire registered status.
EU Trade Mark Application
An EU Trade Mark Application is filed online using the OHIM e-filing system.
The form is not overly complicated but there is a lot of information required and a lot of options so it is important to get the application form correct. Given the volume of applications that OHIM receive any mistake may lead to a long delay in the application being processed.
Examination
The application (once filed and paid for) will be assigned to an EU Trade Mark Examiner. The Examiner will examine the trade mark application under two sets of grounds (as set out in the CTM Regulations).
1) Absolute Grounds for Refusal
An Examiner will assess whether the proposed trade mark has sufficient distinctive qualities so as to function as a trade mark. The function of a trade mark is to distinguish the goods /services of one undertaking from those of another.
Trade marks which fall foul of this section are marks which are generic or lack any imaginative thought or marks which indicate the kind, quality, quantity, intended purpose, geographical location or time of production.
The Examiner will then write to the applicant or its representatives and confirm whether the mark has passed this stage.
If an Absolute Grounds objection is raised the applicant will be given 2 months to defend the objection and attempt to overcome it. If it cannot be overcome the trade mark application will be refused.
It is important therefore to ensure (prior to application) that the mark will not fall foul of these grounds.
If the mark does pass this stage it will be examined under Relative Grounds for Refusal.
2) Relative Grounds for Refusal
The Examiner will conduct a trade mark search of EU trade mark registry to identify any existing identical or similar registered or pending trade marks which may be cited against the proposed trade mark.
Once the Examiner has examined the trade mark application he/ she will issue the search report to the applicant or its representatives which will list all the marks that the Examine has raised.
At this point the Applicant can withdraw the application if it so wishes or allow it to proceed to the next stage (publication).
Publication
The owners of the marks raised in the Examination report will written to and be given the opportunity to oppose the application during what is known as the ‘publication stage’ which lasts for a period of three months.
If an opposition is raised the applicant has the option to withdraw the application or fight the opposition. Before the applicant decides to fight the opposition it must be aware of the costs implications.
Registration
If no opposition is raised during the 3 month publication period the mark will become registered. The registration lasts for 10 years and can be renewed every 10 years after that.
The trade mark registration gives the owners an exclusive right to use the trade mark in relation to the relevant goods and services to which it is registered for.