EU Trademarks

The EU trademark system provides trademark protection across all EU member states under a single registration, managed by the European Union Intellectual Property Office (EUIPO). Below is an in-depth overview of EU trademarks, including types, registration criteria, procedural steps, and notable court decisions that have shaped EU trademark law.

1. Types of EU Trademarks

EU law recognizes a wide range of trademarks:

• Word Marks: Words, letters, or numbers (e.g., "NIKE").
• Figurative Marks: Logos or graphical elements, with or without text.
• Shape Marks: 3D shapes, such as product packaging (e.g., Toblerone).
• Position Marks: Unique positioning of elements on products.
• Color Marks: Specific colors or combinations without outlines (e.g., Milka purple).
• Sound Marks: Audible trademarks represented graphically or with audio files (e.g., jingles).
• Motion Marks: Moving sequences or animations.
• Multimedia Marks: Combined sound and image elements.
• Hologram Marks: Three-dimensional holographic visuals.
• Pattern Marks: Repeated patterns used to identify goods or services.

Recent updates to EU trademark law allow for the registration of non-traditional trademarks such as motion, sound, and hologram marks, provided they are represented clearly and meet distinctiveness requirements.

2. Registrability Criteria

Absolute Grounds for Refusal

A trademark may be refused registration if it:

• Lacks Distinctiveness: Cannot distinguish goods/services of one enterprise from another.
• Is Descriptive: Directly describes the goods/services (e.g., “Best Shoes” for footwear).
• Is Generic: Commonly used to describe the goods/services.
• Is Deceptive: Misleads consumers about the product's origin, quality, or nature.
• Contravenes Public Policy or Morality: Offensive or prohibited signs.
• Includes Protected Emblems: Incorporates state symbols or other protected emblems.

Case Example: Windsurfing Chiemsee (C-108/97 and C-109/97)

• The CJEU ruled that geographical names can be protected as trademarks if they have acquired distinctiveness through use, even if they are descriptive of the product's origin.

Relative Grounds for Refusal

A trademark may also be refused if:

• Confusion with Earlier Marks: Similarity to an existing trademark could confuse consumers.
• Dilution of Well-Known Marks: Use of a similar mark exploits or tarnishes the reputation of a famous trademark.

Case Example: Adidas v. Fitnessworld (C-408/01)

• The CJEU held that the use of a mark similar to Adidas' three-stripe logo constituted dilution, even without direct consumer confusion.

3. Trademark Application Procedure

Steps to File an EU Trademark

Pre-Filing Search:

• Conduct searches using the EUIPO TMview database to identify potential conflicts.

File the Application:

• Submit an application online via the EUIPO portal with:
• Representation of the mark.
• List of goods/services under the Nice Classification.
• Filing fees (€850 for one class).

Examination:

• The EUIPO examines compliance with absolute grounds for refusal but does not assess conflicts with earlier rights.

Publication:

• The mark is published in the EU Trademark Bulletin, opening a 3-month opposition period for third parties.

Registration:

• If no oppositions are raised, the mark is registered and valid for 10 years, renewable indefinitely.

Timeline

• Typical processing time: 4-6 months, excluding opposition proceedings.

4. Opposition Proceedings

Oppositions can be filed by third parties based on:

• Relative Grounds: Conflict with earlier trademarks or rights.
• Well-Known Marks: Unfair advantage or harm to reputation.

Case Example: Ferrari v. Mansory Design (C-123/20)

• The CJEU ruled that Ferrari could claim protection for unregistered design elements (such as car shapes) as trademarks if they had acquired distinctiveness.

5. Appeals and Remedies

• EUIPO Boards of Appeal: Handle appeals against refusal or opposition decisions.
• General Court (GC): Reviews decisions of the EUIPO Boards of Appeal.
• Court of Justice of the European Union (CJEU): Reviews legal questions from the General Court.

6. Notable EU Trademark Decisions

"BABY-DRY" Case (C-383/99 P)

• The CJEU allowed the registration of "BABY-DRY" for diapers, ruling that the combination of words was distinctive despite being descriptive individually.

L'Oréal v. Bellure (C-487/07)

• The court emphasized that using a mark similar to a well-known trademark for imitation products constitutes unfair advantage, even without direct consumer confusion.

KitKat Shape Case (C-215/14)

• Nestlé attempted to register the KitKat 4-finger shape as an EU trademark. The court ruled that distinctiveness acquired in a part of the EU is insufficient for registration as an EU trademark.

Monopoly Word Mark Case (T-663/19)

• The GC invalidated the Monopoly word mark on grounds of bad faith, as Hasbro repeatedly re-registered the same mark to circumvent proof of use requirements.

7. Role of Trademark Attorneys

As trademark practitioners, our responsibilities include:

Pre-Filing Services

• Trademark Searches: Comprehensive searches for existing marks to avoid conflicts.
• Filing Strategy: Advising on registrability, classifications, and jurisdictions.

Filing and Prosecution

• Preparing and filing EU trademark applications.
• Responding to EUIPO objections or office actions.

Opposition and Litigation

• Representing clients in opposition proceedings before the EUIPO.
• Handling appeals before the Boards of Appeal, General Court, and CJEU.

Trademark Portfolio Management

• Monitoring deadlines for renewals.
• Managing trademarks across multiple jurisdictions.
• Assisting with trademark assignments, licensing, and transactions.

Enforcement and Monitoring

• Monitoring new applications for conflicting marks.
• Enforcing rights through cease-and-desist letters or litigation.

8. Future Developments in EU Trademark Law

• Digitalization: Enhanced tools for trademark filing, monitoring, and management.
• Non-Traditional Marks: Expanding scope and acceptance of non-traditional trademarks.
• Harmonization: Continued alignment of EU trademark practices with international systems.

By offering expert advice and services, trademark attorneys ensure that clients' intellectual property rights are protected and maximized in an increasingly competitive marketplace.