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Like most areas of law, Intellectual Property can appear daunting and complex. There are a great many practice areas, subjects and procedures. The SH&P “A-Z” Intellectual Property glossary is a free and easy to use glossary of legal terms commonly used and associated with IP. We hope that it will help you better understand this topic. All of the entries include contact details for SH&P expert advisers. Alternatively, you can request a free, no obligation, IP Consultation and Review here if you require more information or have a particular issue you would like us to help you with.
The European Patent Office (EPO) is responsible for the granting of European patents under the provisions of the European Patent Convention (EPC).
The EPO is one of the two organs of the European Patent Organisation; the other being the Administrative Council, which supervises the activities of the EPO. It is located in Munich and has a branch in The Hague. There are sub-offices in Berlin and Vienna, and an office in Brussels which liaises with the European Union (EU). The official languages of the EPO are English, French and German.
In order to perform the procedures required under the EPC, the EPO has the following:-
The filing of a European patent application – provided of course that it is granted – results in a patent that can be made effective in as many of the EPC contracting states as are of interest to the proprietor. A European patent should thereafter be regarded as a bundle of patents and which are each subject to renewal at the national Patent Offices of the countries concerned.
The EPO does not handle disputes relating to the infringement of European patents; decisions on such matters are made by the courts in the countries concerned.
The decision of the United Kingdom to leave the EU (so-called Brexit) has no effect on European patents. The EPC is an international treaty and totally separate from the EU.
The European Union Intellectual Property Office (EUIPO) is a registry that offers European Union trade mark and design protection across all member states of the European Union (EU) in one single registration.
Based in Alicante, Spain, the EUIPO manages the registration of European Union trade marks and designs and works alongside the national intellectual property offices of the current 28 member states of the EU, with the aim of harmonising and developing consistent laws and registration procedures across Europe.
Formerly known as the Office for Harmonisation in the Internal Market (OHIM), the EUIPO was created as a decentralised agency of the European Union (EU) and has control of its own legal, administrative and financial matters. Its activities are overseen by the European Commission and the European Parliament and are subject to EU law.
The Executive director, who is appointed by the Council of the European Union, is responsible for the running of the EUIPO which is governed by the Management Board and Budget Committee.
Although the EUIPO has 5 working languages (English, French, German, Italian and Spanish), it is able to process trade mark and design applications in any of the 23 official languages of the EU. The EUIPO keeps a public register of all protected trade marks and designs which is freely-available for public viewing. A link to the register is here.
Through its independent Boards of Appeal, the EUIPO can make decisions on appeals against first instance decisions relating to trade mark and design matters. However, the EUIPO’s decisions can be examined and overruled by the General Court (GC), whose judgments, in turn, can be appealed before the Court of Justice of the European Union (CJEU).
Formerly known as the Community Trade Mark (CTM), the European Union Trade Mark (EUTM) enables right holders to protect their trade mark in every member state of the European Union (EU) by means of a single trade mark registration. As a consequence, the EUTM system is a cost-effective way of protecting a trade mark in all current 28 member states of the EU, rather than seeking national registrations in each member state. The first EUTMs were filed on 1st April 1996.
An existing EUTM will automatically extend to any new member states joining the EU in the future. For example, the most recent member state to join was Croatia in 2013 and as a result all existing EUTM registrations automatically extended to this territory as from the admission date of Croatia to the EU. By the same token, for any member state that leaves the EU then protection of a trade mark in that territory by means of an EUTM will be lost. When the UK leaves the EU as is predicted by 2019, it is certain that protection of a trade mark in the UK will not be possible by means of an EUTM, as it is currently.
Administered by the European Union Intellectual Property Office (EUIPO), the EUTM can be registered in the form of an individual mark (i.e. word mark, figurative mark, figurative mark containing words, 3D mark, sound mark or colour mark) or alternatively as a “collective” mark.
Once an application is made, the EUIPO will examine the EUTM to ensure that it contains all the correct information and meets the legislative requirements. Provided the EUTM meets the criteria, the EUIPO will then publish the trade mark in their Official Bulletin for a period of 3 months. During this period, third parties may object to the registration of the EUTM. Should no objection be received during this period the mark becomes registered and the EUIPO issue a Certificate of Registration to its owner.
A registered EUTM gives its owner wide protection across the EU and empowers the owner to prevent the use by another party of a conflicting trade mark in any of the member states.
In order to keep an EUTM valid there must be genuine use of the mark in the EU within 5 years following its date of registration. Failure to use the mark would leave the EUTM vulnerable to cancellation for non-use by an interested third party. Such an action can be brought following the expiry of the 5 year period.