Navigating the complex waters of EU trademark law can be daunting, especially for non-EU lawyers. With over two decades of experience in the field, I’ve identified some critical mistakes that are commonly made during the filing process by non-EU lawyers. These errors can lead to significant legal setbacks and financial losses. In this article, we will explore these mistakes and provide a bonus tip that could save your client’s strategy in the EU market.

1. Ignoring Prior Rights and Availability

One of the most significant and costly mistakes is neglecting to check for prior rights and the availability of a trademark within the EU. Non-EU lawyers may conduct a thorough search in their client’s home country, such as the US, but fail to perform a similar comprehensive search in the EU. This oversight can lead to accusations of trademark infringement, which carry hefty penalties and can jeopardize your client’s brand.

2. Specifying Too Narrow Goods and Services

In the EU, it’s possible to secure broader protections than in countries like the US or China. For example, if a US client registers a trademark for “software for heart rate monitoring,” in the EU, they could potentially secure rights to the broader category of “software.” Similarly, instead of specifying “women’s clothing, namely shirts, dresses, skirts, blouses,” you could simply claim “clothing.” This broader approach can provide more robust protection against potential infringements.

3. Misunderstanding the Madrid Protocol

Filing under the Madrid Protocol seems similar to direct filings with the European Union Intellectual Property Office (EUIPO), but there are crucial differences. Under the Madrid Protocol, the scope of goods and services protected remains tied to the basic application. This limitation means that broader claims available under direct EUIPO filings might not be possible under Madrid Protocol applications, potentially restricting your client’s trademark protection in the EU.

4. Overlooking Co-Existence Agreements

Earlier co-existence agreements can block a new entrant from registering or using a trademark for certain goods and services within the EU. Failing to identify and consider these agreements can lead to legal challenges and prevent your client from entering the market under their preferred brand identity.

5. Failing to Ensure Sufficient Use in the EU

EU trademarks must be actively used in a significant portion of the EU within five years of registration. Failure to meet this requirement can lead to the cancellation of the trademark, wasting the initial investment and leaving the brand unprotected.

6. Misunderstanding Exhaustion of Rights

The concept of exhaustion of rights in the EU is different from other jurisdictions. EU trademark rights are only exhausted if the goods are put on the market in the EU by or with the consent of the trademark owner. This means EU trademark owners can enforce their rights against sellers of genuine goods that were not originally put on the market in the EU by them or with their consent.

7. Choosing Inexperienced Representation

The complexities of EU trademark law demand experienced legal guidance. Entrusting your client’s EU trademark application to inexperienced service providers can lead to mistakes in filing and strategy, potentially resulting in unnecessary costs, failed applications or legal challenges.

Bonus Tip: Opt for Broad Enforcement

When dealing with infringements, some (not all) civil courts in the EU can issue decisions enforceable EU-wide. Opting for such courts can provide a strategic advantage, allowing you to stop infringers across the entire EU with a single legal action. Here is the official list of the courts!

Conclusion

Securing trademark protection in the EU requires careful planning and an understanding of the unique aspects of the region’s trademark law. By avoiding these common mistakes and employing strategic legal tactics, non-EU lawyers can effectively protect their clients’ interests in the European market.

Share This