EU member countries allow trademarks and designs to be filed and registered through a single application process. The European trademark system operates under distinct rules, differing from those of most other registration-based countries.
Examination Only for Absolute Grounds of Refusal
The European trademark system conducts a limited examination. Only the distinctiveness of the trademark and other absolute grounds for refusal (e.g., public policy, morality) are assessed. The system does not examine for conflicts with prior trademarks.
When a trademark is filed in Europe, it is first checked for absolute grounds of refusal. If none are found, the trademark is published for opposition. If no opposition is filed during the designated period, the trademark proceeds to registration.
As part of the process, an automated search notifies holders of similar prior trademarks about the publication. These notifications are based on automated results without human judgment, meaning trademarks that are quite dissimilar or classified under different categories might still appear. It is up to the prior rights holder to assess the relevance and decide whether to file an opposition.
Opposition Process
If a prior trademark holder believes the published trademark may conflict with their rights, they can file an opposition. However, the opposing party must first demonstrate that their trademark is legitimately in use within the EU. Only after this is proven can the actual comparison and evaluation of trademark similarity take place.
Trademark similarity in Europe is assessed based on likelihood of confusion. In countries like Korea, where trademarks are assessed primarily through registration-based examination, applications can be rejected solely due to perceived similarity with prior marks—even when there may be no real confusion in the marketplace.
The European system addresses this issue by focusing on essential requirements and leaving actual confusion assessment to the opposition process.
Advantages and Challenges
This approach offers faster registration and more market-relevant trademark protection. However, it also results in more oppositions and cancellation requests. It’s said that a European trademark attorney handles around 300 opposition cases per year. With approximately 250 working days in a year, this averages to at least one case per day.
Oppositions can be time-consuming (typically taking 1 to 2 years for a final decision) and expensive, as companies must hire European attorneys to handle them. Failure to respond to an opposition can jeopardize a trademark, posing a significant burden on businesses.
Not the Same as the European Patent Convention
European trademarks and designs are managed by the EU Intellectual Property Office (EUIPO) and are effective across EU member states, currently numbering 27 countries.
Countries such as Switzerland and Norway, which are often thought of as part of Europe, are not members of the EU, so separate registrations are necessary. Additionally, the UK withdrew from the EU on January 1, 2020, meaning trademarks must now be filed separately there.
Meanwhile, the European Patent Convention (EPC) operates independently of the EU, covering 38 member states, including the UK, Norway, and Switzerland.