Trademarks in European Union (EU) 2024

Trademarks in European Union (EU) 2024 – The European Union Intellectual Property Office

TRADEMARKS 2024

EUROPEAN UNION

Michael Hawkins, Tobias Dolde

(Noerr PartGmbB)

LEGAL FRAMEWORK

Domestic law

1. What is the primary legislation governing trademarks in your jurisdiction?

Trademark Regulation (EU) 2017/1001 governs the substantive aspects of EU trademarks. Certain procedural aspects are governed by secondary legislation; namely, the Implementing Regulation (EU) 2018/626 and the Delegated Regulation (EU) 2018/625.

National trademark rights in EU member states are governed by the EU Trademark Directive (Regulation (EU) 2015/2436) and by the national laws of each member state.

International law

2. Which international trademark agreements has your jurisdiction signed?

The European Union is a signatory to the following international trademark agreements:

• the Trademark Law Treaty, signed on 30 June 1995;
• the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, to which the European Union acceded on 1 October 2004; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights, signed on 1 January 1995.

Regulators

3. Which government bodies regulate trademark law?

The following bodies regulate trademark law:

• the European Parliament, the Council of the European Union and the European Commission;
• the EU Intellectual Property Office (EUIPO);
• the EU General Court (which hears actions for the annulment of decisions of the EUIPO Boards of Appeal) and the Court of Justice of the European Union (CJEU)(which hears appeals from the EU General Court and requests for preliminary rulings from national courts); and
• the EU trademark courts.

REGISTRATION AND USE

Ownership of marks

4. Who may apply for registration?

Any natural or legal person, including authorities established under public law, may register a European Union trademark (EUTM).

Special rules apply for the entitlement to register collective and certification marks.

Scope of trademark

5. What may and may not be protected and registered as a trademark?

Signs that may be protected and registered as a trademark

The EU Intellectual Property Office (EUIPO) recognizes many types of mark (word marks including slogans, personal names, letters and numerals, and figurative marks, as well as non-traditional marks such as shape marks, pattern marks, colors per se, color combinations, holograms, motion marks, multimedia marks, position marks, and other marks, such as the layout of a retail store) under two main conditions set out in the Trademark Regulation (EU) 2017/1001 (EUTMR):

• the sign must be capable of being reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner; and
• the sign must be capable of distinguishing the goods or services of one undertaking from those of others.

EU collective marks are registrable if they are capable of distinguishing the goods or services of the members of the association that is the proprietor of the mark from those of other undertakings. In addition, regulations of use must be submitted.

EU certification marks allow a certifying institution or organization to permit adherents to the certification system to use the mark as a sign for goods or services that comply with the certification requirements (materials, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin). The owner of the EU certification mark must not itself carry on a business involving the supply of goods or services of the kind certified. Further requirements are similar to those for EU collective marks, including regulations governing use.

Signs that may not be registered as a trademark

The EUTM legislation distinguishes between absolute and relative grounds for refusal.

Any one of the absolute grounds listed in article 7(1) of the EUTMR is sufficient for the refusal of an EUTM application, as follows:

• signs that are incapable of being represented on the EU Trademark Register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor;
• non-distinctive trademarks – that is, signs that are devoid of any distinctive character (distinctiveness is assessed by reference to the relevant public’s perception of the sign in relation to the goods or services at issue);
• descriptive trademarks – that is, signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the service, or other characteristics of the goods or service;
• generic terms – that is, signs or indications that have become customary in the current language or in the good-faith and established practices of the trade;
• shapes or other characteristics that:
• result from the nature of the goods themselves;
• are necessary to obtain a technical result; or
• give substantial value to the goods;
• trademarks that are contrary to public policy or to accepted principles of morality;
• deceptive trademarks – that is, trademarks that are of such a nature as to deceive the public;
• trademarks that may be refused pursuant to article 6ter of the Paris Convention – that is, signs that have not been authorized by the competent authorities;
• badges, emblems or escutcheons of particular public interest (other than those covered by article 6ter of the Paris Convention), unless the competent authority has consented to their use;
• under certain conditions, traditional terms for wine;
• traditional specialities guaranteed, which highlight the traditional characteristics of a product in either its production process or composition; and
• plant variety rights that are identical (or highly similar) to an earlier registered plant variety denomination and are in respect of plant varieties of the same or a closely related species.

The absolute grounds for refusal consisting of lack of distinctive character, descriptiveness and common use (only) may be overcome if the trademark applied for has acquired a distinctive character as a consequence of the use that has been made of it.

Each of the above grounds of non-registrability is sufficient even where the ground applies only in a part of the European Union, including a single member state.

On the other hand, article 8 of the EUTMR provides for the relative grounds for refusal. Upon successful opposition by a third party, an EUTM application will not be registered based on earlier rights invoked in relation to the following relative grounds listed in article 8 of the EUTMR:

• identity between both the goods or services and the marks, where likelihood of confusion is presumed and need not be proven;
• identity or similarity of the signs and identity or similarity of the goods or services, such that there is a likelihood of confusion, including a likelihood of association (for these purposes, an ‘earlier right’ is an earlier EU or national trademark of an EU member state or Benelux, an international registration with the same effect or a well-known mark pursuant to article 6bis of the Paris Convention);
• unauthorized filing of the proprietor’s mark as an EUTM by its agent or representative (the opponent must show that it is the proprietor of a trademark acquired anywhere in the world by registration or by use), unless the agent or representative justifies his or her action;
• an earlier non-registered trademark or other sign used in the course of trade of more than mere local significance, provided that the proprietor has the right to prohibit the use of the later trademark;
• an earlier designation of origin or geographical indication protected under EU legislation or member state laws, provided that the proprietor has the right to prohibit the use of the later trademark; and
• an earlier reputed registered trademark, to prevent registration of a later similar or identical application that, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, irrespective of the similarity of the goods or services. Likelihood of confusion is not a condition for the application of this article; rather, a connection between the conflicting marks must be established. The earlier mark with a reputation must be an EUTM or national trademark of an EU member state (or of Benelux), or an international registration with the same effect.

Unregistered trademarks

6. Can trademark rights be established without registration?

At EU level, no protection is available to unregistered trademarks. The ninth recital in the preamble to the EUTMR specifically states that the rights in an EUTM ‘should not be obtained otherwise than by registration’. However, national unregistered trademarks – if they enjoy protection under the laws of respective member states – can be invoked as earlier rights in inter partes proceedings (oppositions and invalidity actions), subject to certain conditions.

Further, the protection available to unregistered trademarks is generally available at a national level only and can encompass passing-off, company names, trade names, domain names, titles and so on. The EUIPO maintains a list of recognized unregistered rights throughout the member states in its guidelines.

Famous foreign trademarks

7. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

The EUTMR grants no express benefit to any trademark registered outside the European Union, irrespective of whether it is famous or not. However, foreign registrations are relevant for the assessment of unauthorized filing by an agent and may be relevant for an allegation of bad faith.

The benefits of registration

8. What are the benefits of registration?

A registered EUTM bears a presumption of validity unless and until it is invalidated or revoked.

The owner of a registered EUTM has the right to prevent all unauthorized third parties from using, in the course of trade:

• an identical sign in relation to identical goods and services;
• an identical or similar sign in relation to identical or similar goods and services, if a likelihood of confusion exists (including a likelihood of association); or
• an identical or similar sign, irrespective of whether it is used in relation to identical or similar goods and services, where the EUTM has a reputation in the European Union and use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the EUTM.

Owners of EUTMs may also take action against counterfeit goods in transit in the European Union unless the importer can prove that there is no trademark infringement in the country of final destination.

Filing procedure and documentation

9. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The following information and documentation must be submitted:

• a request for registration of an EUTM (if filed on an EUIPO form, no express request is necessary);
• information to identify the applicant;
• a representation of the trademark;
• a list of goods and services, listed by international class; and
• the signature of the applicant or the representative (if not filed electronically).

To have a filing date accorded, the application fee must be paid. A second language must be designated in the application for the purposes of disputes. Where the first language is one of the five working languages of the EUIPO (English, French, German, Italian and Spanish), the second language can be any other official language of the European Union. Where the first language is one of the official languages of the European Union other than the working languages of the EUIPO, the second language must be one of those five languages.

An EUTM can be represented in any appropriate form using generally available technology, as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner to enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor. If the EUTM application is not a word mark, the mark type must be indicated.

For shape marks, a graphic reproduction of the shape – including computer-generated imaging – or a photographic reproduction must be submitted.

For sound marks, an audio file reproducing the sound or an accurate representation of the sound in musical notation should be submitted.

For color per se marks, a reproduction of the color and an indication of that color by reference to a generally recognized color code should be submitted.

For color combinations, the reproduction must show the systematic arrangement of the color combination in a uniform and predetermined manner with a reference to generally recognized color codes.

A description detailing the systematic arrangement of the colors is also highly recommended. Further, according to EU case law, smell marks do not comply with the representation requirement.

Electronic filing is available.

The EUIPO does not require trademark searches before the filing of an EUTM application. However, the electronic filing process allows applicants to conduct, for free, a search of earlier potentially conflicting EUTMs or trademarks protected in individual member states. The results of this search are not binding and are for information purposes only.

Registration time frame and cost

10. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The registration proceeding typically takes under four months, assuming no objections or oppositions.

The application fees are as follows:

• individual mark – €1,000 (for one class of goods or services), €50 (for a second class of goods or services) and €150 (for each additional class of goods or services);
• individual mark filed electronically – €850 (for one class of goods or services), €50 (for a second class of goods or services) and €150 (for each additional class of goods or services);
• collective mark or certification mark €1,800 (for one class of goods or services),
• €50 (for a second class of goods or services) and €150 (for each additional class of goods or services); and
• collective mark or certification mark filed electronically €1,500 (for one class of goods or services), €50 (for a second class of goods or services) and €150 (for each additional class of goods or services).

The rights conferred by an EUTM registration prevail against third parties from the date of publication of the registration in the EU Trademark Bulletin, although reasonable compensation may be claimed in respect of acts occurring after the date of publication of an EUTM application.

The estimated time and costs of the registration proceeding could be increased because of:

• formal requirements issued by the EUIPO;
• a provisional refusal on absolute grounds; and
• opposition by a third party.

Classification system

11. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Goods and services in respect of which trademark registration is applied for shall be classified in conformity with the system established by the Nice Classification.

The goods and services for which the protection of the trademark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.

The general indications included in the heading of the Nice Classification or other general terms may be used, provided that they comply with the requirement of clarity and precision. Some of these terms are, however, not considered to comply with that requirement.

Applications that do not comply with the requirement of clarity and precision will be rejected by the EUIPO, where the applicant does not suggest an acceptable wording within the period set by the EUIPO to that effect.

Multi-class applications are available upon payment of €50 for a second class of goods or services and €150 for each subsequent class.

Examination procedure

12. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The EUIPO examines an EUTM application for formalities, classification, priority and seniority, compliance with the regulations governing use of the mark, in the case of collective and certification marks, and absolute grounds for refusal. All these examination steps can be carried out in parallel, as there is no strict sequence in examination proceedings.

The EUIPO does not examine for potential conflicts with other trademarks ex officio. However, it does carry out an EU search. An EUTM applicant who has opted in for such search reports will receive a list of the relevant conflicting earlier marks. Further, national search reports from a limited number of participating offices are available upon the applicant’s request at the time of filing, for a fee. The result of such search reports is for informational purposes only.

Citations of third-party trademarks are not made by EUIPO.

If the EUIPO detects one or more absolute grounds for refusal, it sends an official communication to the applicant, who has two months to file a response. The applicant may ask for an initial two-month time extension, which will normally be granted automatically. Subsequent extensions must be justified.

Use of a trademark and registration

13. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark or service mark does not have to be claimed before registration is granted or issued.

Proof of use does not have to be submitted, except where EUTMs that have been registered for more than five years are invoked in opposition or cancellation proceedings and proof of use is requested, or where a revocation action is filed against the EUTM.

The EUTMR provides for priority under the Paris Convention and seniority.

Priority may be claimed of one or more previous trademark applications filed in or in respect of a state party to the Paris Convention, a member of the World Trade Organization, or a state for which the European Commission has confirmed reciprocity, provided that the priority is claimed for the same trademark in respect of goods or services that are identical with or contained within those for which the application has been filed and the EUTM application is filed within the six months from the date of filing of the first application.

The date of priority shall count as the date of filing of the EUTM application for the purposes of establishing which rights take precedence (the right of priority).

Seniority may be claimed by proprietors of an EU-registered trademark or applicants of an EUTM that already hold a national or international trademark registration with effect in one or several member states for identical goods or services, within two months of the filing of the EUTM application (or after the registration of the EUTM).

Seniority has the sole effect under that, where the proprietor of the EUTM surrenders the earlier trademark or allows it to lapse, the proprietor will be deemed to continue to have the same rights as he or she would have had if the earlier trademark had continued to be registered, and is subject to the validity of the earlier trademark the seniority of which is claimed.

An EUTM benefits from a five-year use period. After that time, the trademark may be revoked upon request of a third party if it is not proven that the trademark has been put to genuine use within the preceding period of five years.

Markings

14. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

EUTM owners can indicate trademark registration by placing the symbol ® or indicating the registration number next to the trademark. Marking is not mandatory.

The indication that the trademark is registered may deter potential infringements; it is also helpful in the event of any legal action. The absence of marking does not, however, have any impact on remedies available in infringement proceedings.

Appealing a denied application

15. Is there an appeal process if the application is denied?

Any decision partially or entirely refusing, revoking or invalidating an EUTM application or registration is appealable before the EUIPO’s Boards of Appeal. A notice of appeal must be filed in writing and the appeal fee must be paid within two months of the date of notification of the contested decision. If the notice of appeal does not contain the grounds on which the appeal is based, a statement of grounds must be lodged within four months of notification of the contested decision. These time limits cannot be extended.

Further appeals are available before the EU General Court and then before the CJEU.

Third-party opposition

16. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Applications are published for opposition and a third party may oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration.

Opposition

A third party, based on earlier rights anywhere in the European Union, may file a notice of opposition (subject to payment of the opposition fee of €320) within three months of publication of an EUTM application (this three-month opposition period begins to run one month after publication in the case of international registrations designating the European Union). The filing language must be one of the five working languages of the EUIPO (English, French, German, Italian and Spanish) and must coincide with one of the two languages chosen by the EUTM applicant.

When the opposition is found admissible, there is a cooling-off period (two months, extendible to 24 months upon request of the parties) designed to encourage amicable settlement. The opponent is given two months after the expiry of the cooling-off period to substantiate its earlier rights and submit facts, evidence or arguments in support of its opposition, following which the EUTM applicant has the right to respond. Further rounds of correspondence are possible, especially where proof of use is requested (namely, where the opposing right has been registered for more than five years, and the applicant requests that the opponent prove that its mark has been put to genuine use).

Oppositions cannot be based on absolute grounds for refusal. However, in such a case, any third party (no legal interest needs to be shown) may submit third-party observations to the EUIPO, explaining on which grounds the trademark should not be registered ex officio.

Revocation and invalidity

Revocation proceedings based on non-use can be initiated by any third party (no legal interest needs to be shown) if five years have passed since the registration of an EUTM. The EUTM owner has an extendible period of two months to prove that it has put its EUTM to genuine use within the territory of the European Union during the relevant period or that there are proper reasons for non-use. Where genuine use is shown for only some of the goods or services for which the EUTM is registered, it will be revoked for the remainder. The burden rests with the trademark owner.

An EUTM can further be invalidated (totally or partially) on the basis of absolute grounds, bad faith, relative grounds or where another earlier right exists in the European Union or in an EU member state that permits the use of the trademark in question to be prohibited (in particular, a right to a name, a right of personal portrayal, a copyright or an industrial property right such as an industrial design right). An invalidation based on absolute grounds may not be declared if the proprietor of the trademark proves that the mark has acquired distinctiveness through use in relation to the goods and services for which it was registered before the filing date of the invalidity action.

The burden of proving the invalidity grounds rests with the invalidity applicant, and an EUTM has a presumption of validity unless and until it is invalidated.

Both proceedings are initiated through an application for revocation or for a declaration of invalidity and payment of a fee of €630.

The EUTMR considers bad faith only as an absolute ground for the invalidity of an EUTM. Therefore, bad faith cannot be used as a basis for opposition, but only as a ground for invalidity.

According to EU case law, bad faith is defined as ‘conduct which departs from accepted principles of ethical behavior or honest commercial and business practices’. Therefore, bad faith is a fairly open concept that depends on the circumstances of the case.

In general, case law shows three factors that are particularly relevant:

1. identity or confusing similarity between the signs;
2. knowledge of the use of an identical or confusingly similar sign; and
3. dishonest intent on the part of the EUTM owner.

As for point (2), knowledge may be presumed to exist on the basis, inter alia, of general knowledge in the economic sector concerned or the duration of the use. The presumption may apply if the sign was registered in a non-EU country. This does not, however, mean that the ownership of a foreign mark will automatically entitle the owner of such a mark to invalidate a registration on the basis of bad faith, the assessment of which depends on the particular circumstances of the case and the overall assessment of the relevant factors.

Costs depend on numerous factors, such as use, reputation, settlement negotiations, etc. However, straightforward opposition matters may range from €500 to €3,000 and cancellation actions from €1,000 to €5,000.

Duration and maintenance of registration

17. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The term of registration of an EUTM is 10 years from the filing date of the application. Registration may be renewed indefinitely for further 10-year periods. The request for renewal and the renewal fee must be submitted within six months or within a further period of six months (upon payment of an additional fee). The request must be submitted in one of the five working languages of the EUIPO. The extent of the renewal is deemed total by default (otherwise it must be specified).

Trademark use is not required for its maintenance. Nevertheless, revocation proceedings may be filed by third parties. In such a case, use of the mark can be proven by any means. In general, the place of use, the duration of use, the extent of use and the nature of use are relevant factors to determine if the mark has been put to use by its proprietor.

Surrender

18. What is the procedure for surrendering a trademark registration?

An EUTM registration can be totally or partially surrendered only by the owner (or its authorized representative) applying in writing to the EUIPO. Surrender has no effect until it has been entered in the EU Trademark Register. The validity of a surrender of an EUTM that is declared subsequent to the filing of an application for revocation or invalidity is conditional upon the final rejection or withdrawal of that application for revocation or invalidity.

If a license or other right has been registered, the surrender shall be entered only with the agreement of the proprietor of the right. In the case of a license, the entry is made on the expiry of a three-month period following the proprietor satisfying the EUIPO that it has informed the licensee of its intention to surrender or sooner if it proves that the licensee has consented.

Related IP rights

19. Can trademarks be protected under other IP rights?

Yes. There is no prohibition on trademarks being protected by, for example, copyright or design rights where they meet the relevant requirements (although there are certain prohibitions, and the courts increasingly tend to reject as trademarks signs that have previously been protected by other IP rights).

Trademarks online and domain names

20. What regime governs the protection of trademarks online and domain names?

Infringements in the online sphere are also governed by the EUTMR. The EU Trademark Courts have jurisdiction under the EUTMR and relevant national law. Additionally, an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy or other relevant dispute resolution mechanism may be available in the case of abusive, bad-faith domain registrations.

LICENSING AND ASSIGNMENT

Licenses

21. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

A license may be recorded before the EU Intellectual Property Office, upon request of any of the parties and the payment of a fee of €200 per registration, to a maximum of €1,000 where multiple requests are submitted in the same application or at the same time. The application for registration of a license may contain a request to record a license in the register as one or more of the following:

• an exclusive license;
• a sub-license;
• a license limited to only part of the goods and services for which the mark is registered;
• a license limited to part of the European Union; or
• a temporary license.

It is not compulsory to register a license in the EU Trademark Register, but it is strongly advisable as the license has no effect with respect to third parties without notice unless it is recorded. Also, a licensee may not be able to take action against infringing use unless the license is recorded.

A European Union trademark (EUTM) may be licensed for some of or all the goods or services for which it is registered and for the whole or part of the European Union. A license may be exclusive or non-exclusive. Unless the license agreement provides otherwise, the licensee may bring proceedings for infringement of an EUTM only if the proprietor consents. An exclusive licensee may bring proceedings in its own name if the EUTM proprietor does not, after formal notice, bring infringement proceedings itself within an appropriate period. A licensee is entitled, for the purposes of obtaining compensation, to intervene in infringement proceedings brought by the proprietor.

A typical license agreement usually specifies the type of license, its duration, the goods or services licensed and the territory covered. Provisions on quality control are not obligatory.

Assignment

22. What can be assigned?

An EUTM or an EUTM application may be transferred separately from any transfer of the undertaking, in respect of some of or all the goods or services it protects, but only in respect of the entire European Union.

Assignment documentation

23. What documents are required for assignment and what form must they take? What procedures apply?

The assignment must be in writing and be signed by the parties, except when it is a result of a judgment or where it is part of the assignment of an entire undertaking. An assignment must be entered in the EU Trademark Register for it to have effect with respect to third parties without notice and for the assignee to invoke the rights arising from the EUTM.

A single application for registration of a transfer may be submitted for two or more trademarks, provided that the registered proprietor and the successor in title are the same in each case.

Validity of assignment

24. Must the assignment be recorded for purposes of its validity?

No, but it must be recorded to have effects for third parties in all EU member states.

Security interests

25. Are security interests recognizedand what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

EUTM registrations or applications may be given as security or be the subject of rights in rem. Upon request of one or both parties and payment of the relevant fee, the security or right in rem will be entered in the register and published. If submitted by the pledgees alone, the request must contain proof of the right in rem.

A right in rem for an EUTM is in its entirety and for the whole territory of the European Union. The right in rem is governed by national law and is treated the same as an equivalent national trademark registered in the EU member state in which the EUTM proprietor or applicant has its seat or domicile or in which the proprietor has an establishment; or, if neither of the former is applicable, in Spain.

The security interest need not be recorded for purposes of its validity or enforceability, but it must be recorded to have effects for third parties in all EU member states.

ENFORCEMENT

Trademark enforcement proceedings

26. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed oppositionand cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

All actions regarding the infringement of European Union trademarks (EUTMs) are under civil law pursuant to Trademark Regulation (EU) 2017/1001 (EUTMR) and are heard by the EU trademark courts of the EU member states. Specific rules govern the jurisdiction and territorial scope of remedies granted by the EU trademark courts. Generally, the procedural rules of the member state involved will govern the proceedings.

The EUTMR requires the member states to designate in their territories a number (as limited as possible) of national courts and tribunals of first and second instance.

Enforcement actions under criminal law (if counterfeiting is involved) may be brought at national level under the relevant national law. Criminal law enforcement rules for trademarks have not been harmonized in the European Union. As a result, the options available at EU level for criminal law enforcement vary considerably.

Procedural format and timing

27. What is the format of the infringement proceeding?

As infringement actions are heard by the EU trademark courts in individual EU member states, the format of infringement proceedings varies according to the specific procedural rules that govern the proceedings.

Burden of proof

28. What is the burden of proof to establish infringement or dilution?

As infringement actions are heard by the EU trademark courts in individual EU member states, the procedural rules on the burden of proof vary from one member state to another.

Standing

29. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The proprietor of an EUTM and its authorized licensees can file an infringement action. Subject to a different arrangement in the license agreement, a licensee may bring proceedings for infringement of an EUTM only if the proprietor consents. However, the holder of an exclusive license may bring such proceedings if the proprietor, after formal notice, does not itself bring infringement proceedings within an appropriate period.

Border enforcement and foreign activities

30. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The principle of regional exhaustion applies in the European Union, so proprietors of EUTMs may prevent the unauthorized placing of all goods on the market in the European Economic Area. Seizure and destruction of counterfeit goods at the European Union’s external borders are available.

The proprietor of an EUTM may file an application for action covering all EU member states, as a result of which customs authorities will assist in identifying, seizing and reporting infringing goods. Infringing goods in transit through the European Union may also be seized, even if they are not destined for EU consumers, unless the infringer can prove that there is no infringement in the country of final destination. Grey goods and parallel imports do not fall within the remit of the customs authorities, although the proprietors of EUTMs can take civil action to prevent their sale for the first time in the European Union.

Discovery

31. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

As infringement actions are heard by the EU trademark courts in individual EU member states, the rules of discovery vary from one member state to another.

Timing

32. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

As infringement actions are heard by the EU trademark courts in individual EU member states, the time frame related to infringement actions varies from one member state to another.

Limitation period

33. What is the limitation period for filing an infringement action?

The statute of limitations varies across the European Union. In general, the time frame is usually between three and six years from the date of the infringement or from the date on which the proprietor knew or ought to have known the facts upon which the action is based.

Litigation costs

34. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

As infringement actions are heard by the EU trademark courts in individual EU member states, the range of costs related to infringements varies from one member state to another.

Appeals

35. What avenues of appeal are available?

First-instance decisions of national EU trademark courts can be appealed to the EU trademark courts of second instance under the conditions determined by the national laws of the respective EU member state. Further appeals may be available where the EU member state’s judicial system has a third instance. EU trademark courts may make references on points of law (in particular on the EUTMR) to the Court of Justice of the European Union.

Defenses

36. What defensesare available to a charge of infringement or dilution, or any related action?

A number of defenses are available, as follows:

• honest use of the name or address of a natural person (the ‘own name’ defence);
• honest use of non-distinctive and descriptive signs or indications;
• honest referential use of signs and indications regarding the intended purpose of goods or services (resale of genuine goods, and indication of accessories or spare parts);
• use of an EUTM in relation to goods that have been put on the market in the European Economic Area under that mark by the proprietor or with its consent (exhaustion of rights), unless the proprietor has legitimate reasons to oppose further commercializationof the goods;
• use of a later EU or national trademark that would not be declared invalid (intervening rights);
• use of rights acquired before the filing or priority date of the EUTM registration;
• tolerated use of a later sign by the EUTM proprietor (acquiescence);
• due cause, where the reputation of the earlier EUTM is claimed and there is unfair advantage or detriment;
• the existence of absolute grounds for refusal (by way of invalidity action or counterclaim);
• use of a later-registered mark, if the EUTM was liable to be revoked for non-use at the time the later mark was adopted (intervening rights); or
• evidence that the EUTM proprietor is not entitled to prohibit the placing of goods in transit through the European Union on the market in the country of final destination.

Remedies

37. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Where an EU trademark court finds infringement, the primary remedy is an order prohibiting further infringement or threatened infringement, accompanied by measures aimed at ensuring that the prohibition is complied with (eg, a penalty payment).

Damages and other remedies are governed by national law and may vary. In general, there are usually quantified damages in the form of compensation of the claimant’s loss, disbursement of the profits made by the defendant or payment of hypothetical royalties. Under civil law, punitive damages are not usually awarded, but they are possible and are increasingly sought.

Other remedies include claims for seizure and destruction of the infringing products, disclosure of information, rendering of accounts and publication of the judgment.

As a rule, infringement of an EUTM entitles the owner to remedies across the whole European Union if the relevant EU trademark court has the jurisdiction to grant pan-European relief. However, pan-European remedies are limited where, for linguistic or other reasons, there is no infringement in a certain part of the European Union.

Numerous member states provide for criminal liability and penalties for certain trademark infringements, particularly counterfeiting.

ADR

38. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Some EU member states have ADR techniques available, as does the EU Intellectual Property Office and some national trademark offices.

UPDATE AND TRENDS IN TRADEMARKS IN EUROPEAN UNION (EU)

Key developments of the past year

39. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

In two recent cases, Indo European Foods v EUIPO (Case T-342/20), 6 October 2021 and Nowhere v EUIPO – Ye (APE TEES) (Case T-281/21), 16 March 2022, the EU General Court ruled that the EU Intellectual Property Office (EUIPO) erred in deciding that opposition proceedings based on prior UK rights could no longer be upheld against European Union trademarks (EUTMs), following Brexit. I

n the most recent case, the EU General Court took the position that the filing date of the contested EUTM application is decisive to identify the applicable substantive law in oppositions and the fact that the earlier trademark could lose the status of a trademark registered in a EU member state after the filing of the contested application, in particular following the possible withdrawal of the member state concerned from the European Union, is, in principle, irrelevant to the outcome of the opposition. Both of these cases are pending before the Court of Justice of the European Union, following appeals by EUIPO.

* The information in this chapter was accurate as at August 2023.

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