European Union – Trademarks

Opposition
For EU Trademarks, the term of opposition precedes the registration of the mark. It should however be noted that the fact that nobody files an opposition does not prevent a third party from initiating cancellation proceedings against your registration in the future. If so, we will as your agent be informed thereof and will of course contact you as soon as we are duly notified.

Use
It is important to note that the trademark must be used in its registered form. Upon proving use of a trademark, the EUIPO or a court may accept as equivalent, use of the mark in a shape/design/make where the differing elements do not materially alter the distinctive character of the registered form of the mark.

At the request of a third party, the registration of a EU Trademark may be cancelled by the European Union Intellectual Property Office (EUIPO) or by a national court if the mark has not been used within five years of the registration date in the EU and its proprietor is unable to give a valid reason for the failure to use the mark.

Marking
Marking is not compulsory, but advisable. Common markings are ”Trademark” ™ or ”Registered Trademark” ®.

Registered owner
The consequence of not recording changes in title varies from country to country. In some countries, it is an absolute condition that the entity claiming protection is the same entity that is recorded as owner in the national registry. In other countries failure to record changes in title may make it more difficult, for instance, to file renewal documents or to file lawsuits against infringers. Thus, we highly recommend that changes of name and assignments are duly recorded. Please contact your consultant at AWA for more information.

Licensing
It is possible to license a EU Trademark. The recording of a licence in the EUIPO registry is not compulsory. However, failure to do so may render the licence ineffective against third parties.

Pledging
It is possible to pledge a EU Trademark. The recording of a pledge in the EUIPO registry is not compulsory. However, failure to do so may render the pledge ineffective against third parties.

Watching
The EUIPO will not automatically cite your EU Trademark as a bar to registration of a new trademark application for an identical or highly confusingly similar mark. The applicant of the new trademark, however, will be notified of your trademark by EUIPO. Should the new trademark be published AWA will be informed by the EUIPO about this publication and the deadline for a possible opposition. We will, when we deem it necessary, forward this information to you and charge you for
this service. If you also want us to make an evaluation, please contact us.

We recommend that you use our watching service in order to improve your chances to detect trademarks that may have been published despite the existence of your EU Trademark.

N.B. The registration of a confusingly similar trademark can be prevented only by your actions, i.e. lodging an opposition. Please feel free to contact us when in doubt.

Countries outside the EU
An EU Trademark results in protection within the EU member states only. If the trademark is to be protected outside the EU, it is advisable to apply for registration in the countries of interest. Please note that if you wish to use your EU Trademark as a priority for an application outside the EU, time is of the essence. Please contact your consultant at AWA for more information.

Alterations in Laws
Please note that these requirements may change over time and AWA does not assume any responsibility to keep you updated of any legislative or other amendments. In order to provide yourself with updated and current information, do not hesitate to contact your consultant at AWA.