A trade mark is an object of intellectual property that distinguishes the goods or services of one business from those of others. The core legal function of a trade mark is to indicate the commercial origin of goods or services and to enable consumers to distinguish them from goods or services of a different origin.
Not every name or logo is automatically a registered trade mark. For an EUTM, exclusive rights arise as a result of registration. At the same time, a sign that initially lacked sufficient distinctive character may in certain cases be registered where the applicant demonstrates that it has acquired such character through use.
For an EUTM, the sign must be capable of distinguishing the goods or services of one undertaking from those of others and must be represented in the Register in a manner that enables the subject matter of protection to be determined clearly and precisely — this is the requirement of Article 4 EUTMR, which replaced the outdated requirement of "graphic representation."
What Forms a Trade Mark May Take
Registration is available for signs of various types: word marks (a name, a slogan), figurative marks (a logo, a symbol), combined marks, three-dimensional marks (the shape of goods or packaging) — and a range of others, including position marks, sound marks, motion marks, and holograms. The full list of types accepted by EUIPOis broader than it might initially appear.
What Registration Confers
Registration confers on the proprietor exclusive rights in the mark and, under the conditions provided for in the EUTMR, allows the proprietor to prohibit third parties from using identical signs for identical goods or services, and similar signs — where a likelihood of confusion exists. Without registration, the options for protection depend on other legal grounds and applicable national law and, as a rule, require more complex proof of factual rights in the sign.
The EU Trade Mark: Unitary Character
The European Union trade mark (EUTM) is registered at the European Union Intellectual Property Office (EUIPO): a single application confers a single unitary right effective across the entire territory of the EU. The reverse side of this unity is that an obstacle affecting the EUTM as a unitary right may affect the application or registration at the level of the entire Union, not merely a single member state.
The filing date of the application is of key significance for establishing the seniority of rights. Where an applicant has previously filed an application for the same mark in a state for which priority rights exist under the Paris Convention or a WTO agreement, the applicant may, under the conditions set out in Article 34 EUTMR, claim the priority of that earlier application within six months. Registration is valid for 10 years and may be renewed for successive ten-year periods without any limit on the number of renewals.
Genuine Use Requirements
To maintain the full scope of legal protection, an EUTM must be put to genuine use. Where genuine use has not commenced within five years of registration, or has subsequently been suspended for a continuous five-year period, rights may be revoked upon an application for revocation.
Evidence of use may include sales of goods under the mark, affixing the sign to goods or packaging, advertising, invoices, catalogues, website materials, and documents relating to the provision of services. However, the mere presence of a sign in advertising or on a website does not in itself constitute genuine use — what is assessed is the reality, scale, duration, territory, and nature of the commercial use.
There is no mechanical rule as to the minimum number of member states required for genuine use. In Leno Merken (C-149/11) , the Court of Justice of the EU noted that national borders should not be treated as decisive: all the circumstances of use are assessed, including the characteristics of the market and of the goods or services, and the scale and territory of sales. In certain circumstances, use in a single member state may be sufficient.
Where genuine use is established only in respect of part of the goods or services, rights may be revoked only as to the remainder; where there is no genuine use in respect of the entire specification, revocation may extend to the EUTM in its entirety.
Before filing an application, it is worth checking not only what you wish to register but also what has already been registered nearby — reducing the risk of refusal starts precisely at that step. Dr. Emil Benatov & Partners advises at the pre-filing stage, when the territory, the list of goods and services, and the registration strategy can still be adjusted without the need to correct an already filed application.
