Regarding the registration of trademarks and patents, what do the European Union regulations tell us? What is a Community trademark? What is a unitary patent?
Before analyzing the EU regulations governing the registration of trademarks and patents, it is necessary to go into specific detail and clarify what Community trademarks and European patents are.
Trademark and patent registration: what is a Community trademark?
The European trademark—originally called "Community" trademark and established by EC Council Regulation no. 40/94—allows for the acquisition of a distinctive sign valid throughout the entire territory of the European Union with a single application. The European trademark is a single title in the sense that it can be registered, transferred, surrendered, declared null and void or revoked, and its use can only be prohibited for the totality of the Community and not for individual states.
Who can register a European trademark?
Those entitled to register a European trademark are natural persons who are nationals of or domiciled in a Member State, legal entities having their registered office or a stable establishment in a Member State, and also natural or legal persons who are nationals of, domiciled in, or have a registered office or stable establishment in one of the States party to the Paris Convention or the Agreement establishing the World Trade Organization (GATT). This registration system coexists with the national trademark registration system and the international trademark system under the Madrid Agreement.
Preliminary assessments before registration
Before filing a trademark, it is necessary to choose how to file it—whether word or figurative—in which classes to register it, and where to register it. It is then important to carry out a novelty search to ensure that the chosen distinctive sign is not already registered by others. If you have not already done so, we recommend reading the "Registering a Trademark" section which provides useful advice in this regard. Furthermore, it should be emphasized that it is necessary to carry out a "trademark renewal" every 10 years starting from the filing date of the registration application.
When the preliminary analysis has been carried out with care and, as always recommended, with the help of an expert consultant in the field, one can proceed with filing the registration application.
Trademark and patent registration: how to file a European trademark application?
The European trademark registration application can be submitted to the European Union Intellectual Property Office (EUIPO) based in Alicante (Spain).
To file the registration application, a specific form must be completed (which can also be downloaded from the Internet) indicating the data of the applicant, who will become the owner of the distinctive sign, the trademark data, and the classes of products or services to be claimed.
Based on recent office guidelines, it will no longer be possible to merely indicate the class number, but it will be necessary to list the specific products and services of interest.
A specimen of the distinctive sign must also be attached, in color or black and white depending on the choice made, and fees must be paid which vary based on the type of logo and the classes chosen.
In the case of an application for the registration of a collective trademark, a copy of the regulations governing the use of the trademark must also be attached.
Trademark and patent registration: examination of the registration application
Once the registration application is filed, an application number and a filing date are obtained, from which the examination of the file begins.
An initial formal and technical examination is carried out by the office, which checks the formal compliance of the application and the absence of so-called absolute grounds for refusal (for example, a trademark contrary to public policy or morality, or an offensive trademark).
If, on the other hand, the trademark passes this office examination, then the application is published.
From the date of publication, a three-month period begins during which anyone who feels harmed by the trademark application—because they believe that trademark is similar to their own earlier trademark or because such a trademark violates their rights as it constitutes infringement—can file an Opposition to the registration before the EUIPO.
In the event of an opposition, an administrative proceeding will be opened during which the trademark applicant can defend themselves against the party opposing the grant of the trademark, and finally, a decision will be issued which may result in the grant or refusal of the trademark.
Once any opposition phase has concluded positively, or if the three-month period has expired without action, the trademark is published and registered in the classes indicated in the application.
What are the rights of the EU trademark owner?
The trademark confers on the owner the exclusive right to use that name throughout the territory of the European Union for 10 years, and upon expiration, it is possible to proceed with its renewal for a further 10 years. The trademark is revoked if it is not used for a period of 5 years starting from registration.
Trademark and patent registration: the European patent
The European patent, also called the Community patent, is a patent obtained following a unified procedure of filing, examination, and grant.
It is worth knowing that in the event that, for the same invention, an Italian patent and a European patent valid in Italy have been granted to the same inventor, the Italian patent, to the extent that it protects the same invention as the European one, ceases to produce its effects.
This principle is aimed at providing the patent holder with greater protection.
In fact, the national title (the weaker one) is replaced by the European patent, for which the holder had to engage in a full adversarial process with the European Patent Office.
The cessation of effects of the Italian title in favor of the European patent occurs on the date on which:
- the deadline for filing an opposition to the European patent has expired without any opposition being filed;
- the opposition procedure has definitively concluded with the European patent being maintained in force;
- the Italian patent has been granted, if this date is later than those referred to in points a) or b).
It may take many months before the European patent application is accepted or rejected.
During this period, however, the invention can be implemented, sold, or licensed.
It is important to know that during the European patent grant procedure, the application must be kept alive by paying annual fees.
At this stage, in order not to lose rights, it is also necessary to respond to any observations or objections raised by the office and pay the relevant fees.
Trademark and patent registration: alignment with European standards
On February 14, 2019, the Council of Ministers definitively approved two Legislative Decrees—which entered into force last March 27—of great interest to the world of intellectual property.
In particular, one of the two Decrees implements Directive (EU) 2015/2436 regarding trademarks and aligns national legislation with the provisions of Regulation (EU) 2015/2424, which had updated the regulations for the Community trademark.
Among the main innovations introduced by this:
- the absolute ground for refusal of trademark registration in the event of conflict with designations of origin and geographical indications (PDO/PGI), regardless of the sector (wines, spirit drinks, agricultural and food products, etc.), as well as the provision of specific grounds for refusal of registration due to conflicts with protected traditional terms for wine (TWT) and traditional specialities guaranteed (TSG) protected by Union legislation;
- enhanced protection for trademarks that enjoy a reputation in a Member State;
- the extension of the possibility to apply, even in cases of mere transit, the border seizure procedure for counterfeit goods;
- the introduction of the prohibition to carry out preparatory acts for infringement.
The Unitary Patent
The second Decree, by implementing the delegation under Law October 25, 2017, n. 163 (European Delegation Law 2016-17), aligns national legislation with the provisions of Regulation (EU) no. 1257/2012 on enhanced cooperation for unitary patent protection, and with the provisions of the Agreement on a Unified Patent Court.
Among the most relevant innovations are:
- the modification of some articles of the Codice della Proprietà Industriale (Industrial Property Code) relating to patent protection, with particular reference to the introduction of unitary patent protection (European patent with so-called "unitary effect");
- the establishment of a common jurisdiction for all countries participating in the European patent system, with exclusive jurisdiction over actions for infringement, revocation, declaration of invalidity or non-infringement of European patents, as well as related provisional and precautionary measures, counterclaims, and actions for damages also in relation to supplementary protection certificates issued on the basis of a European patent.