European Union – The EU TM System: a cost effective solution for the protection of trademarks in Europe

The EU TM System: a cost – effective solution for the protection of trademarks in Europe

by Franco de Barba, Trademark Attorney at MERX IP

In the European Union there coexist two different trademark systems. The “national system” and the “European system”, the latest being the most used by foreign companies.

1. Traditional approach

In case a company is willing to use its trademark in one single country of the EU, perhaps where his business is based at the moment, it is possible to make a trade mark application directly at the relevant national IP office. This is the national route.

Due to the territoriality principle, the national trademark will give protection only in that country.

Trademarks to be applied for will have to be filed, registered, monitored, defended, renewed, etc., for each State in which protection is needed, which increases the costs unnecessarily.

System of IRs facilitates this to some extent but does not change that principle, and trademarks may take up to 18 months to be granted.

Negative aspects of the traditional approach:

It is expensive for companies operating in several EU countries
Different rules apply for each single national TM (registration requirements, renewal, enforcement),
Not adapted to needs of the EU Single market system (free movement of goods/services across the EU.
Prosecution usually takes more time.

2. The European Trademark system approach

But the European Union is not a combination of 28 markets, but a Single Market. This means that member states have removed customs barriers between themselves and introduced a common customs policy towards other countries. For this reason, most of the companies want protection in more Member States of the EU, and apply for an EU trade mark from EUIPO – this is the European route.

The national and EU systems are complementary ones, and work in parallel with each other.

Furthermore, you do not need to use the EU trademark in ALL member states.

Benefits of registering a European Union trade mark

A single registration is valid in all EU Member States.
The EU trade mark gives its owner an exclusive right in all current and future EU Member States at a reasonable cost.
You can enforce your trade mark in a market of almost 500 million consumers.
An EU trade mark is valid for 10 years. It can be renewed indefinitely, 10 years at a time for each renewal.
In smooth proceedings, applications can be granted even in 5 months from the filing date.
No POA nor legalizations are required.
EUIPO is based in Spain and thus, is any certification is needed, we may obtain it in the shortest delays.
Avoid translation costs into each of the different languages of the EU. A EU application can be filed in English, and EUIPO will translate with no additional costs into the official languages of the EU.
No registration fees (only application fees).
No costs to be incurred in relation to the issuance of Certificates of Registration (issued electronically).

In 2017, EUIPO received 146 407 EUTM applications for trademark protection from EU-28 Member States, while during 2017, EUIPO received 135 328 EUTM applications. In 2009-15, the total number of EUTM applications increased both in the EU-28 and worldwide (see Figure), after a small decrease between 2007 and 2008.

Source: https://euipo.europa.eu

In 2018, Spain, Germany, Italy and the United Kingdom had the highest number of EUTM applications out of all the EU-28 Member States. The number of EUTM applications from these countries accounted for almost 40 % of total.

The highest number of EUTM applications made to EUIPO from outside Europe came from the United States and China. In 2017, the United States had the highest average number of EUTM applications per year out of all non-European countries (16 675). The same year, EUIPO received 12 176 applications from China for trademark protection in the EU.