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What is a European Trademark and How is it Different From a US Trademark?

“Your trade mark tells customers who you are,” reads the first line on the European Union Intellectual Property Office.1 Similar to the trademark laws in the United States, trademark law in the EU is all about brand and consumer protection. Trade mark, the word being separated into two words in the EU, is a way for customers to identify a business, a way to differentiate your products and encapsulate your business’s values. EU regulators state, “It may be your most valuable asset.”2


In contrast to the US, some countries within the EU do not require you to register the mark in order to be granted protection. All that is required is that the trade mark is used.3 In the US, you must register the trademark and use it in commerce in order to be granted protection.


The only condition in the EU is that the trade mark is clearly defined. The list of types of marks includes:4


· Work mark

· Figurative mark

· Figurative mark containing word elements

· Shape mark

· Shape mark containing word elements

· Position mark

· Pattern mark

· Colour (single) mark

· Colour (combination) mark

· Sound mark

· Motion mark

· Multimedia mark

· Hologram mark


Intellectual property rights in the EU are implemented in order to help reward innovators and enable those innovators to benefit from such achievements. This again equates to the US theory behind intellectual property rights as well.


Somewhat similar to the US, the EU has a dual system for both the EU in general and then the national systems of EU Member States.5 The US has both the federal and state registrations. However, the national laws within the specific Member States implements Directives, with the hope of harmonizing the national law with the EU law.6

Besides the registration through the European Union Intellectual Property Office, another avenue for registration exists through the Community Trademark system. A Community Trademark (“CTM”) is “a registered trademark that protects your brand in every EU member state and encourages international business and branding.”7


CTM protects your brand in the 27 European countries in the European Union (Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovenia, Slovak Republic, Spain, Sweden, and the United Kingdom).8 In order to qualify for this type of mark, each country within the EU must approve the mark. If one country rejects the mark, then the registrant must file separate national applications for each country.9 If accepted in all countries, the mark can then be protected under one lawsuit for infringement in any nation.10 This is often advised if the applicant would otherwise seek registration in more than three of the EU nations.11


Grounds for refusal are also similar to the US. The EU has both absolute and relative grounds for refusal of a registration.12 Absolute grounds, similar to the US, are based on marks which have no distinctive character. Other absolute grounds include “marks which designate exclusively the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of goods or the rendering of services or other characteristics of the goods or services, and marks consisting exclusively of signs or indications which have become ‘customary’ in the current language or in bona fide and established practices of trades.”13 However, differing from the US, a generic trade mark can acquire distinctiveness, granting it protection.14


Relative grounds for refusal include marks that are “identical to, or likely to cause confusion with respect to, an earlier trademark.”15 The US places a great emphasis on this ground for refusal as well, stemming from the bedrock principal of trademark law, attempting to prevent confusion.


However, for the CTM process, the time frame to use the mark in commerce is much longer than that in the US. The registrant has five years to put the CTM to genuine use in the Community.16 In the US, the applicant must include a statement that the mark was used in

commerce, verified in an affidavit or declaration, or include an “intent-to-use” in commerce.17 If the applicant files an intent-to-use, the mark must be used within six months.18 The applicant can also file five extensions, consisting of six months each, which means that within the US, the applicant must use the mark within three years of registration.

While there are technical differences between trademark law within the EU and the US, the general purpose of both legal systems intend to achieve the same goals, thus leading to similar outcomes. As no “international copyright” currently exists, trade mark holders in the EU and trademark holders in the US have to be aware of the differing legal systems that govern the mark that represents their businesses.


 

[1] https://euipo.europa.eu/ohimportal/en/trade-marks

[2] Id.

[3] Id.

[4] https://euipo.europa.eu/ohimportal/en/trade-mark-definition

[5] https://www.inta.org/Advocacy/Pages/EuropeanUnionTrademarkSystem.aspx

[6]

[7] https://www.upcounsel.com/community-trademark

[8] https://www.nolo.com/legal-encyclopedia/registering-your-trademark-outside-the-us-madrid-protocol-community-trademarks.html

[9] Id.

[10] Id.

[11] Id.

[12] https://corporate.findlaw.com/intellectual-property/the-european-community-trademark-law.html

[13] Id.

[14] Id.

[15] Id.

[16] Id.

[17] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e7.html

[18] https://www.upcounsel.com/intent-to-use-trademark

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