FOCUS

European Union Trademark

The European Union Trademark (until 23 March 2016 known as Community Trademark) has effect throughout the European Union (Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Holland, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom) as it becomes a single title valid throughout the territory of the Union.

Duration

The registration of a European Union Trademark lasts 10 years from the filing date and can be renewed an unlimited number of times.

Protectability

Signs which can validly constitute a European Union Trademark cover a very wide range: signs which can be reproduced graphically, especially words, including the names of people, drawings, letters, figures, the shape of the products and their packaging. Such signs can be protected providing they are suitable to distinguish the products or the services of one company from another.

In order to be registered, a European Union Trademark must also possess a distinctive character and cannot consist exclusively of an indication of the product’s place of origin; moreover, it must not be against public order, nor such as would lead the consumer to make a mistake.

It is possible to connect to the European Union Trademark the previously registered Italian trademark and any other trademarks already registered in the countries of the European Union so that it will be possible, when the trademark is to be renewed, to let the pre-existing trademarks lapse and maintain only the European Union Trademark.

The European Union Trademark involves a complicated process since, before being registered, it must undergo an examination as to merit.

As far as merit is concerned, for example the so-called descriptive trademarks cannot be registered, nor those contrary to public order, nor deceptive trademarks. If the trademark does not pass the examination of merit, it is rejected completely.

Even though it may be difficult to obtain a European Union Trademark, and in some cases even impossible, it does however constitute a strong right.

Opposition from third parties

If it passes the examination, it is published in the appropriate lists and the holders of similar or identical trademarks in the different member states of the European Union can present an opposition against the trademark being registered. If the motives accompanying the oppositions cannot be overcome even for only one of the member states of the European Union, then the European Union Trademark is rejected completely but it is possible to transform it into numerous national trademarks, obviously only in those countries where there is no conflict with already existing trademarks.

Rights conferred

The rights conferred by the European Union Trademark are substantially similar to national legislation on this subject.

The holder of the trademark has the right to forbid any third person:

1. to use a countermark identical to the European Union Trademark for products or services identical or similar to those for which this trademark is protected;
2. to use any countermark which might create confusion among the public because of the identity or similarity of the products or services;
3. to use a countermark which is identical or similar to the European Union Trademark for products or services dissimilar from those for which the trademark was registered, if the European Union Trademark enjoys widespread fame, and if this use might constitute an unfair advantage or damage for the holder of the European Union Trademark;
4. to put the countermark on products or their packaging;
5. to offer for or put on sale or store the products, or to offer or supply the services under cover of the countermark;
6. to import or export the products under cover of that particular countermark;
7. to use that particular countermark in commercial correspondence and in advertising.

Lapse

A European Union Trademark lapses in the following cases:

1. when it has not been validly used for an uninterrupted period of 5 years and there has been no legitimate reason to have prevented it being used.
   The holder of a European Union Trademark can be declared to have lost his rights when, following the use which has been made by the holder or with his consent for the products or services for which it is registered, the trademark might deceive the public on the nature, the quality or the geographical origin of these products or services.
2. when it has become, because of the activity or inactivity of the holder, the habitual denomination in the trade of a product or a service for which it is registered.
   Partial lapse is also allowed, that is, the trademark lapses only with respect to a part of the products or the services for which the trademark is registered.

The request for a trademark to be cancelled must be presented to the Community Office in writing, and must be motivated; when the request is accepted, the trademark is cancelled from the register. The registered European Union Trademark can also be subjected to actions of annulment by interested third parties, that is, by anyone who has the legitimate right to act according to the type of impediment involved.

Actions of annulment

The European Union Trademark is also subject to actions of annulment which can be absolute or relative. The former concern cases where the trademark was registered in violation of both the absolute and relative impediments to registration. The latter concern the hypothesis where another, prior right opposes the European Union Trademark and there is a real risk of confusion in the public mind between the trademark and this right.

The European Union Trademark can also be declared null and void if its use can be forbidden according to another, pre-existing right. However it cannot be declared null and void if the person who could present a case for cancellation has given his permission for the trademark to be registered, or has tolerated for 5 consecutive years the use of the trademark, unless the European Union Trademark was filed in bad faith. As far as the effects of annulment are concerned, they are the same as for lapse. Both the annulment and lapse of a European Union Trademark can be requested by those persons who have a common interest, such as associations of producers, traders, consumers, etc.

The decisions of the Community Office can be impugned before the Board of Appeals, whose decisions can be impugned in turn before the European Court of Justice.