EUIPO trademark procedure in Italy

The registration procedure of a EUIPO trademark is reserved to companies and natural persons. After having been registered as a European trademark, validity applies to all the 27 EU member countries. The registration procedure of a EU trademark is available online. 

Characteristics of European trademark registration procedures

Registration application procedures of a EU trademark are relatively complex, and International Law Firm Damiani&Damiani provides legal advice and counsel in: 

• EU trademark registration application and process;
• responding to the novelty, distinctiveness and lawfulness requirements of the mark in all EU member countries, in their official languages and according to the Nice Classification; 
• choosing between the three types of trademark to register: individual marks, certification marks and collective marks; 
• selecting the classes of goods and serviced subject to the registered trademark;
• identifying intellectual property rights granted by the registration of the EU trademark.   

Filing, costs, validity of EUIPO trademarks 

After being filed, a EU trademark is valid in all EU member countries for 10 years. It can be renewed indefinitely 10 years at a time for each renewal. 

There are two types of filing and registration fees:

• basic fee for one class, fast-track individual mark electronic application procedure, 850€;
• basic fee for one class, individual mark paper application, 1000€.
• basic fee for one class, fast-track collective or certification mark electronic application, 1500€
• basic fee for collective or certification mark paper application, 1800€
• basic fee for e-filing renewal of a one-class individual trademark: 850€
• basic fee for paper renewal of a one-class individual trademark: 1000€
• basic fee for e-filing renewal of a one-class collective or certification trademark: 1500€
• basic fee for paper renewal of a one-class collective or certification trademark: 1800€

(Please note that these fees are payable directly to EUIPO and are to be considered out-of-pocket expenses. For further information please visit the website https://euipo.europa.eu/ohimportal/en/fees-payable-direct-to-euipo)

Individual and collective EU trademarks

There are two types of trademark that can be registered in Europe:

• Individual mark: distinguishes the goods and services of one particular company from those of another and can be owned by one or more applicants;
• Collective or Certification marks: only legal persons governed by public law may apply for such marks. EU collective or certification marks certify the commercial origin of goods or services. The single producer or provider of goods and/or services registered by EU collective or certification trademark is entitled to using the mark because of their being part of the association that applied for its registration. With an EU collective or certification mark, it is also possible to identify the geographical origin of the goods or services the mark refers to. 

Conflicts between de-facto trademarks, opposition to trademark, opposition, trademark defence and protection 

Registering an EU trademark does not waive prior rights enjoyed by a previously registered trademark in an EU country.  

However, the filing application of an EU trademark is published in the EU Trademark Bulletin. Within three months from the publication of an EU trademark it is possible to file an apposition to protect earlier rights of a previously registered mark – but the subsistence of any prior right of use is to be examined in relation to the registration of the contested EU mark, and not referring to potential earlier rights of use that the holder might claim. 

To find out in a timely manner if a trademark similar to yours is being used, it is possible to create an alert on the User Area of the EUIPO website in order to receive a notification when similar marks to yours are filed.

Revocation, invalidity, trademark infringement 

An EU trademark can be revoked in the following cases:

• lack of effective use of the mark;
• misleading mark;
• if the mark becomes the common name for a product or service.

Under certain circumstances, a trademark can even be declared invalid, while in case of bankruptcy the mark can be registered, but only after all the insolvency proceedings are closed and all assets liquidated. In this case, if no one has used the mark, a new registration shall be possible. 

Transfer, transcription, EU trademark assignment 

A European trademark – EUTM – can be assigned or transferred totally or partially. With a total transfer, the ownership of the individual design or registered collective design. The partial transfer of a trademark can refer to certain products or services relatively to the registration or application for an individual EU mark, and it is not possible for registered community designs (RCD).

The destiny of European trademarks after Brexit

With the exit of Great Britain from the EU, EU trademarks registered before Brexit are still recognised, granted and protected in the UK through the creation, by the UK Intellectual Property Office, of a corresponding registration, identical to the European one. For the applications of EU trademarks non yet filed before Brexit, however, the equivalent UK title is not automatically granted. 

The case of the trademark on Banksy’s artwork denied for being filed in bad faith

Speaking of invalidity of the trademark for being filed in bad faith or for non-use, the case of the well-known street artist Banksy became famous. Banksy’s trademark application for his artwork ‘Flower Bomber’ has been denied. According to the EUIPO’s decision, his intention was not to use the mark as a trademark at the time of the filing. Moreover, he only made effective use of the mark after the company Full Colour Black Ltd started proceedings to request its cancellation for being filed in bad faith and for not being a distinctive mark.