English
Trademark laws and registration processes vary from country to country. Each country has its own laws and procedures for registering and protecting trademarks, and these laws may differ significantly from those in other countries. The United States and European Union are among the most popular jurisdictions for trademark registration in the world due to their strong legal frameworks, well-established trademark systems, and high levels of protection. However, they are also significant differences between the process of trademark registration in these jurisdictions.
Trademark Offices
The United States Patent and Trademark Office (USPTO) is one of the largest and most well-known trademark registration offices in the world, with a strong legal framework for protecting trademarks. According to USPTO's official statistics, in 2021, there were approximately 576,000 trademark applications filed, and approximately 480,000 trademark registrations issued. These numbers include both domestic and international trademark applications and registrations.
The European Union Intellectual Property Office (EUIPO) provides a single registration system for trademarks in all 27 EU member states, making it an attractive option for businesses looking to protect their brand across the EU. According to the European Union Intellectual Property Office (EUIPO) official statistics, in 2020, there were approximately 173,000 trademark applications filed, and approximately 160,000 trademark registrations granted in the European Union (EU) through the EUIPO.
Trademark priority
The United States follows a "first to use" trademark system, which means that the first party to use a trademark in commerce generally has superior rights over subsequent users of the same or similar trademark. Under the first to use system in the US, a business can establish common law trademark rights simply by using the mark in commerce, without necessarily registering the mark with the United States Patent and Trademark Office (USPTO). However, registering a trademark with the USPTO can provide additional legal benefits and protections, such as nationwide notice of the trademark owner's claim to the mark, the ability to use the ® symbol, and a legal presumption of ownership and validity of the mark.
In contrast, the European Union follows a "first to file" trademark system, which means that the first party to file a trademark application with the European Union Intellectual Property Office (EUIPO) has superior rights over subsequent users of the same or similar trademark, regardless of whether they have actually used the trademark in commerce. Under the first to file system in the EU, businesses seeking trademark protection should apply for registration as soon as possible to ensure that they have priority over potential competitors.
Examination process
There are a number of differences in the trademark examination process between the European Union and the United States. One of the main differences is that the EUIPO conducts both formal and substantive examinations of trademark applications, while the USPTO focuses primarily on substantive examination. The EUIPO examines applications to ensure that they meet formal requirements, such as proper classification of goods and services, and that they comply with the technical requirements of the trademark registration process. Additionally, the EUIPO conducts a substantive examination to assess whether the applied-for mark is distinctive and does not conflict with existing marks. In contrast, the USPTO's examination primarily focuses on assessing the distinctiveness and potential for confusion of the applied-for mark with existing marks.
Additionally, the opposition period in the U.S. is 30 days after the mark application has been published, with a possible extension of up to six months. The EU opposition period is three months following publication of the trademark application and this time cannot be extended.
Requirement of Use
Both the United States and the European Union have use requirements for trademarks, although the specific requirements differ slightly.
In the United States, a trademark owner must use the trademark in commerce in order to maintain its registration and protection. The requirement of trademark use is a common feature of the trademark registration process in the United States. When filing a trademark application in the US, business owners must specify the legal reason for why they are allowed to federally register a trademark. This is known as a filing basis. There are multiple filing bases and business owners must satisfy all the legal requirements for the filing basis that they choose. The most common are use in commerce and intent to use. Under the Lanham Act, a trademark registration may be cancelled if the owner does not use the mark in commerce for a continuous period of three years. In addition, if a trademark owner brings a lawsuit to enforce their trademark rights, they may be required to demonstrate that they have used the mark in commerce in connection with the relevant goods or services.
In the European Union, a trademark owner must use the trademark in commerce within the EU in order to maintain its registration and protection. However, there is a grace period of five years after registration during which the trademark owner is not required to demonstrate use in commerce. After this period, if the trademark has not been used in connection with the relevant goods or services, it may be vulnerable to cancellation or revocation.
Classification System
Both the US and EU use the Nice Classification system, which is a system of organizing goods and services into 45 different classes for the purpose of trademark registration. The Nice Classification system was developed by the World Intellectual Property Organization (WIPO) and is used by most countries around the world.
One key difference between the US and EU is in the way that goods and services are grouped into classes. In the US, goods and services are grouped into 45 different classes, with each class covering a particular type of goods or services. The classes are fairly broad, and it is not uncommon for a single class to cover a wide range of goods or services. In the EU, goods and services are also grouped into 45 different classes, but the classes are more specific and narrow than in the US. This means that it may be necessary to file multiple applications in the EU to cover all of the goods or services that a trademark applicant wants to protect. Additionally, the US allows for "dual classification," which means that a single product or service can be classified in more than one class if it is considered to be relevant to multiple classes. In the EU, however, a product or service can only be classified in one class.
Takeaway
Trademark laws vary between countries, which is why it is essential to familiarise yourself with all necessary procedures and requirements before starting the application process. Find out more about trademark registration in the US and in the EU. Additionally, seeking expert support from an experienced trademark lawyer will certainly give you the help you require to give your business the necessary protection if you’re considering making a move into the EU or US market.
