As a business owner, you may seek to protect your trade mark in the European Union (EU). The EU has 27 member states and is the world’s largest trading bloc. It is also the world’s second-largest economy as a single market and an important trading partner for Australian businesses. Business owners can apply for trade mark protection in a specific EU region or nationally in individual member countries of interest. An important recent development is that the United Kingdom is no longer a member of the EU. Thus, you should consider trade mark protection in the United Kingdom separately. This article will outline what you need to know about filing a trade mark application in the EU.
National Applications vs Regional Applications
Filing National Applications
Prospective trade mark applicants can file applications directly with an EU member country’s national trade mark office. However, you can only enforce a national trade mark in the nominated country.
Filing regional and international applications
Filing a trade mark application designating the EU as a whole provides broader protection for prospective trade mark applicants. You can file this through an application made to a regional office or the Madrid Protocol. The below table outlines the different available application processes.
| European Union Intellectual Property Office (EUIPO) Applications | You can file applications with the EUIPO and designate all EU member states in their application. |
| Benelux Office of Intellectual Property (BOIP) Applications | You can also specifically nominate protection in Belgium, the Netherlands, and Luxembourg (Benelux) under this regional office. This regional economic union has existed since before the EU. |
| Madrid Protocol Applications | Another way you can nominate specific countries is through the Madrid Protocol. The Madrid Protocol offers broader coverage than regional applications. This is because you can continually designate countries during your international registration time period. |
Linguistic Considerations
The EU comprises numerous countries with various linguistic and cultural differences. Therefore, it is important to consider how your prospective trade mark will be represented when filing for EU region protection.
For reference, the official languages of the EUIPO are:
- English;
- French;
- German;
- Italian; and
- Spanish.
Businesses intending to protect their trade mark may also consider protecting translations and transliterations of its English components.
Continue reading this article below the form‘Well-known’ Trade Marks
Under EU trade mark law, ‘well-known’ trade marks enjoy a special degree of protection. The owner of a well-known trade mark can prevent third parties from using identical or similar marks, regardless of its registration status. This applies where the competitor may detriment or seek an unfair advantage over the earlier mark’s character.
This provision intends to protect additional functions of a trade mark, including the overall messaging conveyed to consumers. For example, brands synonymous with luxury or lifestyle can enjoy protection within those areas. These additional functions of a trade mark also carry inherent monetary and social value to the owners of ‘well-known’ trade marks.
Business owners should be aware of what brands are considered ‘well-known’ in the EU marketplace to ensure they are not infringing on these additional rights. Some examples include:
- Apple;
- Tiffany’s; and
- Nike.
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
Key Takeaways
Protecting a trade mark in the EU is often relevant for many Australian businesses. Further, you should consider various alternatives and processes before seeking trade mark protection in the EU.
If you have any questions about EU trade mark applications, our experienced IP lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
The Madrid Protocol is an international registration system. It offers trade mark owners the possibility to protect their trade marks in multiple jurisdictions by filing a single application.
Since Brexit, the UK is no longer part of the European Union. This means you will have to apply separately in the UK if you wish for trade mark rights there.
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