What is a European Union trademark?
The European Union Trademark (once called the Community Trademark) is a unitary trademark valid throughout the European Union.
It is obtained by filing an application for a European Union trademark at the European Union Intellectual Property Office, based in Alicante.
The registration of a single trademark at Community level is very advantageous as it allows to obtain protection of the distinctive sign for an extremely wide market with very limited costs compared to the filing of individual national trademark applications.
Due to its unitary nature, the validity of European Union trademark can be challenged not only on the basis of an earlier European Union trademark, but even on the basis of an earlier national trademark or other distinctive sign, having effect in a member state of the European Union.
What strategies can be used to protect a brand at a supranational level?
The registration of the national trademark gives the owner an exclusive right only in the territory of the State in which it was registered.
Therefore, a party having an interest in protecting a brand in foreign territories has to adopt a strategy of territorial extension of its brand.
Currently, in addition to national registration on a country-by-ountry basis, foreign protection can be obtained through the registration of a European Union trademark, effective throughout the European Union, and through the registration of an International Trademark. The International Trademark can designate a plurality of countries and can also include the designation of the EU.
What rights are recognized by trademark registration?
The registration of the trademark allows the legitimate owner to prevent third parties from subsequently filing and/or using a trademark (or other distinctive signs, such as a company name or a domain name, etc.) equal or confusingly similar to the registered sign for the same products and services or for similar products and services. Protection is limited to the territory for which the trademark was registered and for the products and services claimed.
What is meant by “class” of registration of a trademark?
Trademarks are registered with reference to one or more products and / or services.
These are divided into classes according to an International Classification.
A trademark can therefore be registered for services / products that fall into one or more classes.
The goods and / or services and their classes must be specified in the trademark application.
When preparing the application, it is necessary to pay particular attention to the designation of the classes and to the indication of the products / services of actual current interest and of potential future interest.
Furthermore, it must be taken into account that a wider range of products in the registration application entails a greater risk of conflict with earlier trademarks (identical or similar trademarks can coexist to the extent that they are registered for different products / services).
Finally, it should be borne in mind that under penalty of forfeiture, the trademark must be subject to effective use by the owner (or with his consent, for example through a license) within five years of registration. Therefore, the non-use (for five years from registration) of the trademark in certain classes of products / services originally designated may result in its partial cancellation.
If I register a trademark, do I have an exclusive right to use it for any product or service?
No, trademarks are registered for specific products and / or services.
Protection, therefore, is limited to the use of the registered trademark with reference to the products / services designated in the trademark. In other words, if an earlier trademark is registered for a certain product / service, it can be (except for special conditions, for example related to the reputation of the trademark) registered and / or used by third parties for products / services that are neither the same nor similar. to the products / services for which the earlier trademark was registered.
What requirements must a trademark possess in order to be validly registered?
A trademark must possess “distinctive character”, that is, it must be able to be perceived as capable of distinguishing a product or service from a company from those of other companies.
This implies that, for example, signs that have become commonly used in current language or in the constant uses of the trade cannot be validly registered as trademarks.
Nor can signs consisting solely of generic names of products or services or descriptive indications referring to them be validly registered, such as signs that on the market can serve to designate the type, quality, quantity, destination, value. , the geographical origin, or the time of manufacture of the product or provision of the service or other characteristics of the product or service. The trademark must also be new, that is, not previously used (or already filed) by others for products or services identical or similar to those for which registration is intended.
The novelty is evaluated in relative terms (i.e., limited, to the territory for which registration is requested) and not absolute.
More precisely, signs that are identical or similar to a sign already known as a trademark or a distinctive sign of products or services manufactured, marketed or provided by others for identical or similar products or services cannot be registered as a trademark.
A similar foreclosure applies in the event that the trademark to be registered is identical or similar to a sign already known as a company name, sign or domain name used in the economic activity.
What can be registered as a trademark?
According to the EU Trademark Regulation an EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings; and being represented on the Register of European Union trade marks in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.