How does the EU legal system compare with Australia’s when it comes to trade mark protection? Read on for an overview about the similarities and differences between the two jurisdictions.
Depending on your European ambitions, registering an EU trade mark can be a cost-effective way to cover all the EU’s 27-member states with one registration.The alternative is separately registering your trade mark nationally in several EU countries.
Businesses active in more than one or two EU member states (or with plans to expand), typically register EU trade marks as opposed to national registrations to minimise cost and administrative burden.
The necessity of Trade Mark registration
In Australia, where the legal system is based on common law, trade mark owners can claim exclusive trade mark rights based on either registration or prior use of an unregistered trade mark. In other words, Australia is considered a “first to use” jurisdiction.
The EU is instead a “first to file” jurisdiction, which is the standard approach for jurisdictions with civil law-based legal systems. For EU trade marks therefore, (valid across all EU member states), only registrations provide legal certainty on exclusive rights to trade marks; no matter how many years or to what the extent the trade mark has been used in the past.
At a national level however, some EU countries have trade mark rules like Australia, where exclusive rights to a trade mark can be claimed on prior use. For an EU trade mark, which encompasses all EU member states, registration is required to obtain legal certainty to exclusive rights to a trade mark because it is not possible to have unregistered rights for EU trade marks. This nuance makes it even more important to obtain trade mark registration prior to trading in the EU, to ensure exclusive rights are secured for trade marks in use (or soon to be used).
Ex officio examination of Trade Mark applications
When filing a trade mark application in Australia through the Australian Trade Mark Office, examiners at IP Australia (the Australian regulator) conduct ex-officio application reviews where both absolute and relative grounds for rejection of the application are examined. With EU trade mark applications however, European Union Intellectual Property Office (EUIPO) examiners only carry out an ex officio review for absolute grounds of rejection.
‘Absolute grounds’ (in both Australia and EU) relates to justifications relevant to the nature of the trade mark itself. Examiners can refuse trade mark applications for lack of distinctiveness, an inability to be graphically presented, deceptiveness or for being against public order.
In contrast, ‘relative grounds’ (in Australia) refers to earlier registered or pending trade mark rights owned by individuals or companies. A trade mark application will be rejected by the examiner on these grounds if the trade mark applied for is considered too similar to any earlier registered or pending trade mark right.
This highlights a significant difference in trade mark application procedures assessed by IP Australia compared to EUIPO. EUIPO will not raise any objections to the application based on earlier trade marks. The EU trade mark system instead relies on trade mark owners to actively monitor and oppose new trade mark applications which they consider to be infringing earlier exclusive rights. A detailed ‘watch service’ for businesses with EU trade marks can therefore be extremely helpful.
For registered Australian and EU trade marks ‘use requirements’ exist, meaning that trade marks are vulnerable to removal applications from other trade mark owners if a trade mark has not been sufficiently used within a certain period.
In Australia, as of 24 February 2019, applications to revoke trade marks due to non-use can be filed once three years have passed from the filing date of the application for registration. If the registered trade mark was filed prior to 24 February 2019, an application to revoke for non-use can be filed once five years have passed from filing.
The use requirement rules in the EU are slightly different. For EU trade marks, the earliest point at which a non-use application can be made, is five years after the trade marks registration date. Following such an application, the trade mark owner must prove that the trade mark has been used in the last five years.
Due to ongoing uncertainties arising from Brexit, we recommend businesses file in the United Kingdom in addition to the EU, as we expect newly filed EU applications may not be granted protection in the UK. If you are already active in the EU or planning to expand to the EU in the future, please contact one of Griffith Hack’s trade mark attorneys for an obligation-free discussion about the best way forward.
If you have any questions or require further expert advice, please don't hesitate to contact us