The European Union Trade Marks (EUTM)

registration system and links to the Madrid Protocol (EUIPO)

Trade Mark Protection in Europe

The traditional route, i.e. applying for a trade mark in each country

Using the Madrid system to obtain trade marks in the territory of the Member States

Applying for a European Union trade mark for the whole territory of the European

Union

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National Protection for Trade Marks

File individual

applications

at each of the

National

Industrial

Property Offices

of the EU

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International Protection for Trade Marks

A single fee is

paid to WIPO

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• An individual fee is payable

to some National Offices

• No single unitary right is

granted - ‘bundle’ of rights’

• Each Trade Mark is subject

to the national laws of each

country

Protection for Trade Marks in the European Union

• Unitary character

• One Office for all

• One fee for all

• Use is not compulsory

in all Member states

• Fast-track options

available

• E-filing and e-payment

available

• Online search engines

to perform pre-checks

• Status of applications

available online

• Applications can be

filed in any of the 24

languages

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Fees for trade marks

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https://euipo.europa.eu/ohimportal/en/fees-payable-direct-to-euipo

Language regime at EUIPO

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EUIPO working

languages:

German

English

Spanish

French

Italian

Bulgarian

Czech

Danish

German

Estonian

Greek

English

Spanish

French

(Gaelic)

Croatian

Italian

Lithuanian

Latvian

Hungarian

Maltese

Dutch

Polish

Portuguese

Rumanian

Slovak

Slovenian

Finnish

Swedish

Official languages of the European Union

The European Union Trade Mark

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EUTM registration procedure

A EUTM is a sign capable of being represented graphically, particularly

– words (including personal names)

– designs

– letters

– numerals

– the shape of goods

– their packaging

provided that such signs are capable of distinguishing the goods or services from

one undertaking from those of other undertakings

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EUTM: basic rules (examination)

At EUIPO only an examination on absolute grounds takes place

An applicant can opt for e-filing and use the TMClass database

http://tmclass.tmdn.org/ec2/ (also implemented in India and available on the CGPDTM

website) to indicate the goods and/or services it wishes to cover with the application – with

no other claims (e.g. priority) and immediate payment (e.g. by credit card) the application

is treated as a fast-track, i.e. the examination period is shortened by half of the time and

published earlier.

Signs can be: words (personal names, invented, slogans, misspellings, letters or

numerals, geographical names, etc.), figurative (combinations of words and graphics or

colours, patterns, designs or combinations), colours (single or in combination), 3D (shapes

itself or containing verbal, figurative elements, colours), sounds, olfactory (smell), taste or

holograms (TM search: http://euipo.europa.eu/eSearch/;

https://www.tmdn.org/tmview/welcome)

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EUTM: some examples (words)

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Refused:

• Naturals (Cl. 3)

• Enrich (Cl. 3)

• Therapy (Cl. 10)

• Prima (Cl. 18, 24, 25)

• Options (Cl. 36)

Accepted

• Basic (Cl. 11)

• Maxima (Cl. 10)

• Leicht (Cl. 20)

• Rapid (Cl. 7, 42)

• Renown (Cl. 18, 25, 26)

EUTM: some examples (personal names)

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Accepted

• Ingrid Bergman

• Lady Diana

• Diego Maradona

• Mozart

• Johnny Hallyday

• Jennifer Lopez

Refused

• CLINTON

• BORIS YELTSIN

• FIDEL CASTRO

EUTM: some examples (geographical names)

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As a matter of principle, names of countries are excluded from registration. Other geographical

indications are excluded only when the place has a reputation for the goods or services.

Cl. 9, 16, 38, 41, 42

Cl. 34

Sudan Cl. 2

Cl. 30 Refused

EUTM: some examples (letters & numerals)

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Single letters and single numerals are considered devoid of any distinctive character. Also those

which are only slightly stylised are devoid of any distinctive character, unless they have a colour

claim.

Refused

TDdi (Cl. 12)

XS (Cl. 25)

HD (Cl. 1, 7, 9)

850 (Cl. 12)

Accepted

BK (Cl. 28)

DS (Cl. 9, 40)

A3 (Cl. 12, 37)

750 (Cl. 12)

EUTM: some examples (misspellings)

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Refused

Xtra (Cl. 3)

Xpert (Cl. 9, 16, 42)

Easi-cash (Cl. 36)

Klear trace (Cl. 10, medical

electrodes)

Accepted

Indx (Cl. 9 software)

Sandwicheese (Cl. 29)

Cdestroyer (Cl. 8, 9, 16)

Bollgard (Cl. 1, 31, insect tolerant

genes)

EUTM: some examples (slogans)

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Refused

World’s best way to pay (Cl. 36)

The advantage of information (Cl. 9, 16, 42)

Real people, real solutions (Cl. 35, 37, 42 call

centre)

The best view in surgery right before your eyes

(Cl. 9)

Accepted

More than powder (Cl. 3)

In touch, in flight (Cl. 38, air to ground

cellular communication)

Unlock the potential (Cl. 9, 16, 42,

advisory services in computer area)

EUTM: some examples (figurative)

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EUTM 1191436 EUTM 1996206 EUTM 554428 EUTM 127605

EUTM 1366830

EUTM 1482868

Some examples: EUTM INDIA

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Owner: Amira Pure

Foods Private Ltd

EUTM 007232853

Cl. 30

Owner: Himani FAST

RELIEF

EUTM 003920766

Cl. 3,5,44

VALGLYPA Owner: Cadila

Healthcare Limited

EUTM 011865102

Cl. 5

DIVYA Owner: Patanjali Yogpeeth (Trust)

EUTM 007298491

Cl.3,4,5,9,16,24,25,27,28,30,36,3

9,41,42,43,44

EUTM: basic rules (after publication of application)

Once the application is examined it proceeds to:

• Publication

• Start of 3-month opposition period

• If no opposition – trade mark is registered

• If opposition – inter-partes procedure starts

A EUTM can also be attacked after it is registered by means of a cancellation

procedure, either revocation or invalidity of a EUTM.

The Office receives some 16,000 oppositions per year (around 14.4%) and some 1,900

cancellations per year (around 1.7%) of yearly applications (around 120.000).

Fast-track EUTM applications reached an average of 22% of all applications

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Madrid Protocol

The Madrid System for the International Registration of Marks is governed by the Madrid

Agreement. The objective of this Protocol, concluded in 1891, is to make possible the

protection of a mark in a large number of countries by obtaining an international registration

that has effect in each of the designated Contracting Parties.

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Treaty, acts and other texts in force

• Protocol relating to the Madrid Agreement Concerning the International Registration

of Marks.

• Common Regulations under the Madrid Agreement Concerning the International

Registration of Marks and the Protocol Relating to that Agreement.

• Administrative Instructions for the Application of the Madrid Agreement Concerning

the International Registration of Marks and the Protocol Relating Thereto.

50 Madrid Protocol Members

African Intellectual Property Organization (OAPI), Albania, Algeria, Antigua and Barbuda,

Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and

Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus,

Czech Republic, Democratic People’s Republic of Korea, Denmark, Egypt, Estonia,

European Union, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary,

Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao

People’s Democratic Republic, Latvia Lesotho, Liberia, Liechtenstein.

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Who is entitled to file an application for International Registration under the Madrid Protocol

A party can file it that party

a) Is a national of,

b) Has a real and effective industrial or commercial establishment in or

c) Has a domicile in one of the contracting parties to the Protocol.

An international Registration application is filed at the Bureau through the office of origin of

the basic national application or registration. It cannot be filed directly at the Bureau.

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• It is possible to base an International Registration upon a EUTM application, registration, or

to designate the EU under an International Registration.

• If a holder designates the EU under an International Registration he must also specify a

second language in relation to that EU designation, which has to be one of the official

languages of the EUIPO: English, French, German, Italian and Spanish.

• This corresponds to the “language of opposition”, which must be specified when filing an

EUTM application and which can be used by an opponent in opposition proceedings against

an EU designation, which has to be one of the abovementioned official languages of the

Office.

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Relation between the Madrid Protocol and the European

Union Intellectual Property Office.

Statistics (04/05/2016)

EUIPO

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EUTM applications EUTM applications published

EUTM registered Renewal

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Statistics (29/02/2016)

INDIA

EUTMs Received EUTMs Registered

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Statistics (29/02/2016)

INDIA

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• EUIPO website:

https://euipo.europa.eu/ohimportal/en/

• Statistics:

statistical travel pack EUIPO

• Search sources:

https://euipo.europa.eu/eSearch/

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Expert name: Ernesto Rubio and

Patricia Lopez

Experts´ titles: Advisor and Madrid

Expert

Office for Harmonization in the

Internal Market (OHIM)

Thank You

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