Strategy
European Union trade mark protection gives you great potential to build and defend your brand, and access to many of the possibilities that intellectual property can offer. However, you have to realise this potential: the more you put in, the more you get out.
The strategy you adopt for your trade mark will be unique to you. It will reflect your company's wider interests and its intellectual property portfolio. In pursuing these interests, you should consider three issues in particular:
Using your trade mark
As already mentioned, there are no rights without obligations. The right that has been granted to you is a powerful tool that can be used to help you build brand recognition in the market. However, the monopoly you hold should serve a purpose or it may be removed. The purpose of your trade mark is to distinguish your goods and/or services from those of your competitors in the market. Therefore, your trade mark must be put to use. If you don't use it, third parties can challenge your trade mark for non-use. The law establishes that an EU trade mark must be put to genuine use in the European Union in the five years following its registration.
Your trade mark could also be cancelled if, because of the use you make of it, it becomes the common name for a good or service, or if it becomes misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.
Defending your trade mark
The fact that you own a trade mark does not mean that third parties will stop challenging it. In fact, third parties who have failed to observe the time limits for filing observations or an opposition are given a second chance in which they can try to obtain the cancellation of your right.
You may think this is a bit unfair, but if the tables were turned, you might see it differently: imagine you had failed to observe the time limit for filing an opposition against one of your competitors' trade marks.
The filing of a cancellation action triggers the start of a procedure in which an exchange of arguments between the parties involved takes place. Eventually, if no agreement is reached, we will make a decision.
A request for cancellation costs €630. There are two different forms you can use: the declaration of invalidity form and the revocation form. The difference between them is that invalidity makes the trade mark invalid with retroactive effect (it removes it altogether from the Register of trade marks), and revocation applies as from the date the request is made to the Office.
Developing your brand
Your intellectual property (IP) strategy will evolve over the years and with it your need to expand. If your ambitions extend beyond the European Union (EU), you should seek an extension of your trade mark outside the EU.
There are various options for doing this. You can either file individual applications directly with any non-EU IP office or you can file an international application via the Madrid protocol.
The Madrid Protocol is an essential instrument in worldwide trade mark protection. It is an international registration system, which is administered by the World Intellectual Property Organization (WIPO) in Geneva and has been ratified by many countries around the world, including nearly all individual European countries, the US, Japan, Australia, China, Russia, and, in October 2004, the European Union
The Madrid Protocol requires a basic mark, which is then extended to other States that are party to the Madrid Agreement and/or Protocol. It is important for you to know that, legally speaking, you don't have to wait for your EU trade mark application to be registered before applying for an 'extension' of your trade mark outside the EU. However, there will be a dependency during five years between the basic EUTM and the International registration. Therefore, if your EU trade mark application never reaches registration, for whatever reason, your International registration will be lost.
The international application must be filed with the European Union Intellectual Property Office (EUIPO). In order to use EUIPO as the 'Office of Origin', the EU trade mark owner/applicant must be a national of an EU Member State or have a real and effective industrial or commercial establishment or domicile in the European Union. In other words, not all EU trade mark owners/applicants can file an international registration (IR) application based on an EU trade mark.
To file an international application, it is compulsory to use the official forms: Applicants may not use other forms or change the contents and layout of the forms.
- The EUIPO provides an e-filing tool, available in all official languages which has the same format as EUIPO EM 2 format. EUIPO strongly recommends the use of the e-filing tool to the extent that it gives guidance to the applicant, thus reducing the number of potential deficiencies and speeding up the examination. The e-filing tool is available in all EU official languages but a Madrid Protocol language must also be indicated (French, English or Spanish), as the application will be forwarded to WIPO in that chosen language.
- EUIPO EM 2 paper form (the EUIPO adaptation of WIPO MM2 form) is available in all EU official languages.
- WIPO MM2 form in English, French or Spanish
A handling fee of €300 must be paid to EUIPO when requesting the international application, while the international fees must be paid direct to WIPO. Any payment due to WIPO that has been sent to EUIPO will be returned to the applicant.
After having checked the content and completeness of the application, EUIPO forwards the international application to WIPO. EUIPO is required to notify WIPO of any relevant changes that affect the EU trade mark during the dependency period (five years following the date of the international application).
You can add more countries to your international registration once it has been registered by WIPO. Although this can be done through EUIPO as the Office of Origin, it is much simpler to file additional designations direct with the International Bureau of WIPO.