EU trade mark registration is a convenient procedure that allows you to obtain protection in all 27 European Union member states through a single application. But what happens when an application is refused or a registration lapses? Is there a way to preserve at least part of that protection? Yes — and the mechanism is called conversion.
What Is Conversion of an EU Trade Mark?
Conversion is a procedure provided for under Articles 139–140 of Regulation (EU) 2017/1001(EUTMR), which allows an applicant or proprietor of an EU trade mark (EUTM) to "transform" it into one or more national applications in EU member states.
In simple terms: if your EUTM application has been refused or your registration has lapsed, you may file applications for the same trade mark in individual countries — while retaining the original filing date or priority date of your European application. This is a significant advantage, since in trade mark law the filing date is decisive for protection against competitors.
Conversion is not automatic — it must be initiated by filing a request with EUIPO.
When Is Conversion Available — and When Is It Not?
Conversion is not available in all circumstances. It is possible where an EUTM application or registration has lapsed due to:
- withdrawal of the application by the applicant;
- a situation in which the application is deemed to have been withdrawn;
- EUIPO Appeals: Time Limits, Procedure, and Consequences for an EU Trade Mark;
- surrender of a registered EUTM by its proprietor;
- EU Trade Mark Renewal: Procedure, Time Limits, and How to Maintain Protection for the Next 10 Years;
- lapse or invalidation of the EUTM by a decision of EUIPO or an EU trade mark court.
Conversion is not available, however, where the grounds for refusal, lapse, or invalidation exist equally in the specific country to which conversion is sought. An important rule under Article 140(4) EUTMR applies here:
Where an absolute ground for refusal applies across the entire EU, conversion is excluded in respect of all member states.
Where the ground is linked to the language of a particular member state — for instance, where a word is descriptive only to French consumers — EUIPO will not forward the request to France. For other countries where that obstacle does not arise, however, the route remains open.
The Deadline for Filing a Request: Three Months
A conversion request must be filed within three months pursuant to Articles 139–140 EUTMR. Three months is not a long time, particularly when strategic decisions about the brand and the selection of countries for future protection must be addressed in parallel.
The key difficulty, however, lies not in the length of the period but in identifying the precise moment from which it begins to run. That starting point depends entirely on the reason why the application or registration fell out of the procedure.
What Determines When the Period Starts Running?
The application is deemed to have been withdrawn
Where an application is deemed to have been withdrawn — for example, due to failure to remedy formal deficiencies within the prescribed time limit — the three-month period begins strictly from the date of EUIPO's official notification of that fact (Article 139(4) EUTMR). It is that notification that constitutes the legal starting point, not the date of the underlying event itself.
The applicant withdrew the application voluntarily
Where the application was voluntarily withdrawn, the period begins on the date of withdrawal itself. In this case EUIPO does not issue a separate notification, so it is important for the proprietor to record the exact date independently.
The registration lapsed due to non-payment of the renewal fee
For this scenario, Article 140(1) EUTMR provides a specific rule: the three-month period begins on the day following the last day on which a request for renewal of the registration could still have been filed. The period starts running automatically from the expiry of the renewal deadline, regardless of whether any notification was received from EUIPO.
The application was refused or the EUTM lapsed by decision of EUIPO or a court
Where an application has been refused by a decision of EUIPO, or a registered EUTM has been revoked or declared invalid by a decision of EUIPO or an EU trade mark court, the period runs from the date on which the relevant decision becomes final. While the appeal period at EUIPO is still running and the decision may still be challenged, it has not yet become final. The actual start of the conversion period may therefore occur later than it initially appears.
Why Delay Is Inadvisable
In practice, three months pass quickly. Conversion is a complex process: it requires identifying the relevant countries, preparing documentation, and ensuring compliance with the national requirements of each individual state. A trade mark should be treated as a valuable business asset whose protection requires a clear strategy.
Where the situation arose as a result of a third-party opposition,it is worth assessing the prospects of an appeal before proceeding with conversion — since the conversion period does not begin to run until the decision has become final.
Summary
Formally, there is one deadline — three months. However, the legal starting point differs in each case and depends entirely on the ground on which the EU trade mark lapsed.
