Prior searches and outline of the procedure before EUIPO

Prior searches before filing a CTM

We recommend to conduct a similitude search within the 28 states of the European Community and within the Community trademarks.

This search permits to estimate the risk of any opposition prosecution or action for infringement which could be made in the future.

This search is also highly recommended because filing a trademark even without using it, is considered as an act of infringement in some countries, like France.

Main steps of the European Union trademark proceeding

Filing a European Union trademark has the advantage of being a sole procedure resulting in a trademark having effect in the 28 countries of the European Union  and later also in the new Member States.

Because of its large scope, it is important to file a "strong" sign which will not be refused. There are absolute and relative grounds for refusal.

 

Absolute grounds for refusal

The Office (EUIPO) will study the absolute grounds for refusal such as distinctiveness, and this in anyone of the today's 22 official languages of the E.C.

It is therefore advisable to check, prior filing, that the sign could not be understood in one of the 22 languages as being the designation of the product, as designating the quality or the purpose of the product, etc.

Relative grounds for refusal

As for the relative grounds for refusal, the EUIPO conducts a search among the EU trademarks. It is also possible to request that the search be done by a group of National Offices. However, this search is not complete and is done after the filing.

A search report is sent to the Applicant. However, the EUIPO will not examine this report. In view of it, the Applicant can modify its application by restricting the list of goods.

As the search report does not take into account all the countries, it is useful to conduct a preliminary search among the national, international and European Union trademarks having effect in the E.C.

 

Opposition

Less than one month after the official notification of the search report, the application is published. An opposition may be filed within a 3-month period from the publication of the application by third ones. Any kind of prior rights (i.e. not only a prior mark but also a company name, a name, an unfiled used mark, etc.) may be opposed, even if this right has effect only in one country of the E.C. if this right is opposable to trademarks according to the national law.

The opposition procedure begins with an extendable 2-month period of "cooling-off". During this period, the opponent and the applicant may try to reach an agreement by their own. For example, a limitation to specific products without the EUIPO intervention can stop the opposition procedure.

See our web page : “Opposition before the EUIPO”

 

Division

It is possible to file a division of a EUTM application. For example in case of an opposition regarding some of the designated goods, it is possible to divide the application in order to obtain the registration of the goods which are not the object of the opposition.

The division will keep the filing date of the original application. The division is subject to an official fee. Renewal fees will have to be paid for two different trademarks.

Registration

In the absence of opposition or in case of a won opposition, no registration fee must be paid. The Certificate of registration is received directly.

Do not hesitate to contact us for prior searches

Cancellation

A cancellation (or revocation or invallidity) procedure may be filed by any third within no time limit in order to revoke a EUTM for non use or for absolute or relative grounds.

See our web page : “Cancellation before the EUIPO”.

 

Recording a change of name/address before the EUIPO

There is no official fee for recording a change of name or address of the owner of a CTM. The change will be recorded in the Office’s database for all the trademarks owned by the same owner. No document showing the change is needed. No power of attorney is required.

Recording an assignment before the EUIPO

There is no official fee for recording the assignment of a CTM. We need to know the name and address of the party to which the trademark is assigned, as well as the name and capacity of the persons signing the document for both parties. We prepare and send you for signature: the declaration to be signed by both parties, and a power of attorney to be signed by the new owner. The documents do not need to be notarized or legalized.

Recording a licence before the EUIPO

The official fee for recording a licence is of 200 €. We need to know the name and address of the party taking the licence, as well as the name and capacity of the persons signing the document for both parties.

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