Conversion of an EU Trade Mark; Procedure, Practice and Strategy

As the EUIPO becomes stricter in its interpretation of marks which might be found descriptive, the need to consider converting EU trade mark applications into national rights is increasing. An application which has been refused on the basis that it is descriptive in the English language, for example, can be converted into national trade mark applications in all other EU member countries where English is not the national language. This is also applicable in an opposition procedure in Europe based on a national right where, for example, a German national registration might knock out an EUTM application but would not be applicable to prevent registration elsewhere in the EU.

Proprietors of an EU trade mark application or registration (EUTM) are able to convert the right into national applications as provided in Articles 139 to 141 of EUTM Regulation. It is possible to partially convert an EUTM, where the Applicant wishes to only file national applications for some of the goods and services contained in the original EUTM.  

Procedure & Practice  

When the EUTM has been withdrawn or ceases to have effect, the Applicant has a three-month period from the confirmation date of EUIPO to file an application for conversion. Where the EUTM is refused on absolute grounds or by third-party opposition, an application for conversion can be filed once the decision becomes final (once the 2-month time limit to appeal the decision expires). In the case of EU designations of International registrations, it is also possible to convert the right into national applications governed by WIPO once the designation has ceased to have effect (a process named ‘opting back’).

To start the conversion process, an application to convert and a conversion fee of 200 EURO is payable to the EUIPO who will examine the conversion application.

Examination of the conversation application by the EUIPO involves a formalities assessment to ensure the correct fee has been paid and the application has been made within the relevant time limit. In certain circumstances, the EUIPO will refuse an application for conversion, for example, if the EUTM was revoked on non-use grounds or if the EUTM was refusal or invalidated on grounds that also apply in the country for which conversion is sought. Where the absolute grounds refusal states that the decision only relates to a particular language, conversion of the EUTM is possible but only in territories where that is not the national language.

The application will then be sent to national offices. European national offices have different procedures, some re-examine according to the normal national procedure and the fees are comparable to a national application, other countries may allow the mark to register without further examination.                                    

Strategy

Conversion is typically used when registration of an EU application is blocked based on an absolute grounds refusal or successful third-party opposition action based solely on a national right. The process of conversion allows the Applicant to retain their EUTM filing date. While an application for conversion will be refused if the ground for refusal of the EUTM also applies in the country for which conversion is sought, Applicants are not prohibited from filing fresh national applications in that country. Seeking local advice is recommended on the basis that interpretation of the grounds for refusal can vary significantly between different national Intellectual Property Offices in Europe.

Another strategic consideration for Applicants is whether to withdraw their EUTM and file an application for conversion in order to prevent a final decision of refusal being issued by the EUIPO which would be publicly available on the EUIPO register.

For further queries on converting EUTMs into national applications or any other IP queries, please contact one of our IP practitioners in the London office for assistance.