The European Union Trade Mark
A Practical Guide
This practical guide describes how the EUTM system works following those changes, including: what can be protected; how registrations are obtained and maintained; the many potential obstacles to registration and how to overcome them; and the rights given by a registration.
2016 sees substantial changes to the EUTM system, not least the change of name. This practical guide describes how the EUTM system works following those changes, including: what can be protected; how registrations are obtained and maintained; the many potential obstacles to registration and how to overcome them; and the rights given by a registration. In addition it explains the specific and peculiar features of the EUTM system, such as seniority and conversion, and covers the link between EUTMs and the Madrid Protocol.
'The European Union Trade Mark' will be an invaluable reference tool for anyone involved in brand protection, including trademark attorneys, intellectual property lawyers and in-house counsel working in private practice or in international businesses, both within and outside the EU.
Table of Contents
|Table of contents||4|
|Part A: Introduction to the EUTM system||11|
|1. Introduction to the Union and the EUTM system||11|
|2. The Office||18|
|3. Before an application is filed||33|
|Part B: Applications||40|
|4. Overview of the EUTM application process||40|
|5. Basic requirements and formalities||46|
|7. Absolute grounds objections||67|
|8. Overcoming objections and amendments to applications||89|
|9. After acceptance||96|
|Part C: Oppositions||102|
|10. Overview of the EUTM opposition procedure||102|
|11. Basic requirements and formalities||110|
|12. Relative grounds||120|
|13. Submissions and evidence||136|
|14. Termination of proceedings||156|
|Part D: Post-registration||168|
|15. Maintenance and amendment||168|
|16. Transactions involving EUTM rights||178|
|17. Revocation actions||191|
|18. Invalidity actions||209|
|Part E: Appeals||228|
|19. Overview and the Boards of Appeal||228|
|20. The appeals process||233|
|Part F: Enforcement||243|
|21. Basic principles||243|
|23. Defences and avoiding infringement||259|
|Part G: Particular features of the EUTM system||268|
|26. Restitutio in integrum||282|
|27. Continuation and interruption of proceedings||288|
|28. EU collective marks||292|
|29. EU certification marks||298|
|Part H: International marks||303|
|30. Introduction to the Madrid Protocol||303|
|31. The Office as Office of Origin||311|
|32. Union designations||324|
|About the authors||333|
It is objective, clear-eyed, clearly explained and up to date
Richmond Green Chambers
This book will be useful to anyone involved or interested in trade mark law.
The book certainly lives up to its title, giving a detailed account of the EUTM system and its quirks, with the overarching aim of practicality and utility. With an extremely useful glossary and an easily navigable layout, this is a must-have for any trade mark practitioner, particularly those who are encountering the EUTM for the first time.
Mark Holah is a partner in the intellectual property practice at Bird & Bird, based in London. He is dual-qualified in the UK as a solicitor (England and Wales) and Registered Trade Mark Attorney and is also qualified as a solicitor in Ireland.
Mark has been advising clients on intellectual property issues since 1994. His practice focuses principally on brand protection issues, both contentious and non-contentious, and he has a particular expertise in European Union trade mark law and practice. Mark has been advising on the EUTM (then CTM) system since it began in 1996 and has acted on thousands of EUTM applications, oppositions and cancellation actions.
The legal directories have consistently ranked Mark as an expert. In addition, he is listed as a leading individual in the Guide to the World's Leading Trade Mark Law Practitioners and the International Who’s Who of Trade Mark Lawyers. Mark is a member of ITMA (the Institute of Trade Mark Attorneys) and INTA (the International Trademark Association) and currently sits on the INTA Public Information Committee. He has also spoken on branding issues at a wide range of conferences and events.
Patricia Collis is an associate in the intellectual property practice at Bird & Bird, based in London. She holds an MA (Cantab) and an LLM, and is a Registered Trade Mark Attorney. She has specialised in the field of trade mark law for the past 10 years and has extensive experience of all aspects of brand protection and trade mark portfolio management.
Patricia advises high-profile companies in a range of sectors, including telecommunications, fashion, food and beverages, financial services and media and regularly acts for clients at the European Union Intellectual Property Office, at both first instance and Board of Appeal level. She also has experience of appeals from the European Union Intellectual Property Office to the General Court, and is a frequent user of the Madrid Protocol system on behalf of clients seeking multijurisdictional trade mark protection.
In addition, Patricia has considerable experience of the national trade mark system in the UK as well as cross-proceedings at national and EU level. She is a member of ITMA (the Institute of Trade Mark Attorneys) and of ECTA (the European Communities Trade Mark Association), and sits on the ECTA Design Committee.