EU trade mark or national trade mark: which should you file?
If you sell, or plan to sell, in more than one EU country, an EU trade mark is usually the place to start. It is not always the right answer, though, and the reasons are worth understanding before you file.
One right for 27 countries
An EU trade mark (EUTM) is a single right with equal effect throughout the European Union. It is registered, transferred, surrendered, revoked or declared invalid only for the whole Union at once.¹ One application, one fee structure and one renewal date cover all 27 Member States.
National trade marks continue to exist alongside the EU system. EU law expressly leaves it to each business to choose an EU mark, national marks, or both.²
When an EU trade mark makes sense
You sell online to customers in several EU countries.
You plan to expand within the EU in the next few years.
You want one registration to enforce, renew and manage.
You need a registration for platform programmes that accept EU trade marks.
When a national mark may be better
You trade in one country and have no plans to expand.
A clearance search shows an earlier conflicting mark in one Member State. The owner of an earlier national mark can oppose an EU application,³ and because the EU mark is all-or-nothing, a conflict in one country can block registration for the whole Union.
You need to file quickly in a single market while a broader strategy is worked out.
The all-or-nothing risk, and the safety net
The unitary character of the EUTM is its strength and its weakness. If an application is refused or withdrawn, the applicant can ask for it to be converted into national applications in the Member States where the problem does not arise, keeping the original filing date.⁴ Conversion is useful, but it costs time and money. A clearance search before filing is the better protection.
Already have national marks?
If you own a national registration for the same mark and goods, you can claim its seniority in your EU application. If you later let the national mark lapse, you keep the same rights in that country as if it had stayed on the register.⁵
Use it, or risk losing it
An EU mark must be put to genuine use in the Union within five years of registration.⁶ A national mark must be used in its own country. Think about where you will actually trade when choosing between them.
In short
For most businesses selling across borders, the EU trade mark is the efficient choice. Where there is a known conflict in one country, or your market is truly local, national filings can be the safer route. A clearance search tells you which.
This article is general information, not legal advice. For advice on your brand, write to hello@lunelegal.com. See also our Areas of Practice.
Sources
Ibid., Recital 8
Ibid., Art. 8(1)–(2) and Art. 46(1)
Ibid., Art. 139
Ibid., Art. 39(1) and (3)
Ibid., Art. 18(1)