An Overview Of The EU Trademark Registration System

Nadaline Webster,

At the end of World War II, in an effort to establish a co-operative peace between countries commonly at odds, six founding countries signed the Treaty of Rome in 1957. These six countries - Germany, France, Italy, the Netherlands, Belgium and Luxembourg - created the European Economic Community (EEC) also known as the 'Common Market'. The reunification of Germany in 1990 and the fall of communist regimes across Europe (amongst other political upheavals) paved the way for closer relationships between the growing number of countries working towards co-operation. 

The signing of the 'Maastricht Treaty' in November 1993 brought the European Union (EU) as we know it today into being. The creation of a 'Single Market' had 4 key aims which still form the basis of developments in the EU today - allowing the freedom of movement of goods, services, people and money between the Member States.

The formation of policies around intellectual property, and in particular trademarks, is then critical to these key aims. Strong policies which provide for registration and protection of brands at a community level, support the ability of citizens in those countries to take advantage on the increased marketplace. In a similar way, the World Intellectual Property Office (WIPO) in Geneva, administers an international system under the Madrid Protocol.

While there certainly are more countries participating in the Madrid System, there are key differences between the two that offer additional challenges and advantages to those wishing to avail of protection for their brands throughout Europe. Under the Madrid System, you pick and choose which regions you wish to register your trademarks in and can later expand from there (assuming availability). The European Union Intellectual Property Office (EUIPO) runs a unitary system. This means that while you will automatically enjoy protection in all 28 Member States (soon to be 27), the chosen mark must be available for use in all regions.

While undoubtedly beneficial, this can bring its own headaches. The unitary protection provided in all Member States won't necessarily mean that a business will use that trademark commercially in every state but use of a trademark is critical to the continued protection of a trademark. It was once considered that use of a trademark in one region was enough to maintain protection but more recently, this has become a topic of debate and can be a challenging area for those seeking protection from outside the EU.

In an effort to provide their Member States with the best possible system of protection for intellectual property, the EUIPO frequently issues directives and regulations to improve the system for the now almost 135,000 trademarks registered annually. The most recent of these, Regulation (EU) 2015/2424 of the European Parliament and the Council has made a number of changes. The last of these will come into force in October 2017 and include some procedural changes, the introduction of certification marks in Europe and changes to the graphical representation requirements for applications. 

A European Trademark registration (EU TM) offers a cost effective array of benefits to potential trademark owners but as with any international system, navigating the subtleties for best advantage can be complex. Jan Gerd Mietzel and Carolina Calheiros of Rolim, Mietzel, Wohlnick & Calheiros LLP  join TrademarkNow's Tiffany Valeriano in hosting an EU Trademark Registration Workshop. Jan and Carolina are seasoned experts in European Trademark matters and are at #2 in terms of filing volume of new EU TM applications this year. This webinar represents a golden opportunity to learn tips of the trade from experienced professionals. 

EU Trademark Registration Workshop - Register now!