For companies expanding into foreign industries and countries, it is difficult to ascertain all the different policies one must follow. When it comes to the US and the EU, there are some similarities in the trademark legislation between both systems, for example a registered trade mark is valid for a period of 10 years in either system. However, there are also major differences, the following highlights how trademark law differs between the US and EU.
The US uses a two-tiered system for trademark protection. Trademark owners may register their mark at the state level or with the federal government through the USPTO. Under the Lanham Act, a federal registration gives the registrant rights throughout the entire US. Whereas a state trademark registration only protects the trademark in the state where it was registered. The federal registration provides far more substantial rights than that of the state.
Contrastingly, trademark law in the EU is composed of one unique system which is valid throughout the entire European Union. It is not possible to limit the geographical scope of protection of the European Union trademark to specific member states. However, if you want to register your trademark in a specific country, you have to go through their national offices, i.e. Spanish Patent and Trademark Office.
In the US, the user of a trademark may acquire certain common law rights by using the mark in commerce without registration whereas, in the EU, trademarks must be registered to receive protection.
Trademark rights in the US are based on use in commerce, in which there are two types of application: “Use-in-commerce” or “Intent-to-use.” The application must include the date of the applicant’s first use of the mark and the applicant’s first use of the mark in commerce (such use must be in US commerce). In cases of “Intent-to-use,” there must be proof of the use of the trademark when the opposition period is over or the period may be extended up to six months after the completion of the trademark process in order to supply proof.
In the EU, there is no requirement that the mark be used in commerce for the good and services at the time of application or registration. As a result, a European Union trademark can be registered for goods or services even if the owner of the trademark is not using it, or has no intention to use it. However, if a trademark is not used for 5 consecutive years, another party could attempt to obtain its invalidity based on its lack of use before the European Intellectual Property Office. As a result, its proprietor could lose their rights to the trademark.
In the US, there are different types of marks, of which one of the most common is the standard character mark, also known as a word mark, which protects the wording no matter how the words are displayed. A special form of this is called a Stylized font. This mark is considered as another form of a word mark where the text’s font, color, or size is special – or stylized.
There is no similar type of mark in the EU, where there are word marks and figurative marks. A word mark is made of words consisting of a set of letters, punctuation or numbers, while a logo or stylized word would fall under the figurative mark. Please note that there are different types of mark in the EU as well, such as 3D marks, phonetic among others.
In the US, part of the trademark procedure is that the examiner refuses registration if the proposed mark resembles a mark already registered. However, in the EU, it is entirely up to the owner of the trademark to monitor and oppose other applications. Due to the lack of this added procedure in the European Union Intellectual Property Office, it is vital for the owner of the prior trademark to pay attention to this, especially if they are used to the US procedure where it is done automatically by the examiner. Make sure to talk to your EU attorney about this service in order to protect your rights effectively.
The opposition period in the US is 30 days after the mark application has been published. The US allows filing for an extension of time and this period can last up to six months. Contrastingly, the EU opposition period lasts for a period of 3 months following the publication of the trademark application. This time cannot be extended in relation to EU trademarks.
Trademark laws from system to system tend to differ. Therefore, it is important to pay attention to the way the methods and procedures in the country a trademark is being registered and protected. In terms of the EU and the US, there are some significant differences that have been noted above. Thanks to their many similarities, the processes are not difficult to figure out; however, it is important to understand the specificities of a given system or country when applying for a trademark there.
