Q&A’s

Q:When can an EU registration be challenged for non-use?

A: A challenge on the grounds of non-use can be made 5 years from the date of registration (not the date of filing).

 

Q: Can a partial non-use action be filed?

A: Yes, the non-use action can be directed against certain classes or specific goods/services in the specification.

 

Q: Is use of one term sufficient to maintain the whole class or broader terminology in the same class?

A: It is an art rather than a science to determine what a registered holder could retain/defend if challenged on non-use, where the registrant has some use. Goods or services that are obviously different in nature and purpose should be open to challenge and to being removed. On the other hand, if the registrant can prove use for a limited range of goods/services which may fall under a more broadly defined term in the list of goods/services, it may be allowed to retain the broader term, and therefore broader registered rights, if the broader term is a natural grouping. The courts and IPO are sensitive to the fact that registered rights give rights to protect not only the goods/services listed under the registration but also goods/services similar thereto.

 

Q: Is there any evidential burden for the applicant of the cancellation action to prove the registration is vulnerable to cancellation?

A: No, the burden of proof is on the registered proprietor to show the mark is in use/ partial use.  It is important to note that the commercial success of the product/service is not been examined; the assessment is purely on whether there has been genuine use of the mark for the goods/services as registered.

 

Q: Does the cost depend on the extent of the cancellation action filed?

A: The filing cost is the same cost, regardless of whether a full or partial non-use action is needed.  Subsequent costs would depend on whether the action was defended by the registrant.

The UKTM Office advises that it usually issues examination reports within 20 days from filing, confirming whether a trade mark has been accepted or if objections have been raised. If no objections are made, then the mark will be published for two months for opposition purposes. Finally, if no opposition is received, then the registration certificate is normally issued around two weeks later.

Usually, a completed US Trade Mark Application would give us all the information we require to proceed. No other documentation is required to place the application on file. We recommend filing a certified copy of the priority application in case it is required to prove the priority claim to the national offices in the event of any conversion of the EUTM Application, however this is not a formal requirement.

Yes, Barker Brettell is an officially authorised Agent of the European Union Intellectual Property Office.

The EPO will not refund the filing or designation fee, or any renewal fees if an application is withdrawn/lapses after those fees have been paid.  However, depending on when your application is withdrawn/abandoned, the EPO may refund some or all of the search fee or examination fee.  Typically, if the search and examination both have not started, the EPO will refund both the search fee and the examination fee.  If the search has taken place but examination has not started, then the EPO will refund the examination fee in full.  Additionally, a partial refund of the examination may be issued if substantive examination has begun – further details can be found here: http://www.epo.org/law-practice/legal-texts/official-journal/2016/06/a49.html

In most European countries an electronic copy of a POA is sufficient (or no POA is needed at all).  However, there are a few which still require originals.  Our paralegals can give you details of the POA requirements by country.

Many European countries, as well as the EPO, require the signature of both the Assignor and the Assignee.  Typically, they also require at least an electronic copy of the assignment as proof.  Please contact us for more details on specific countries.

It can take the EPO anything between one and six months for the EPO to deem application withdrawn after a missed renewal deadline – but three to four months is typical.  If the deadline was missed accidentally, despite the applicant having taken all due care to ensure the renewal fee was paid, then it may be possible to restore the application.  We have successfully handled many restorations for clients so we may be able to help you in the same way.

Yes. We can take over representation on your behalf for any European applicant, and pay the fees to WIPO for you.  We will need a Power of Attorney signed by the applicant, or else a copy of the PCT request form signed by the applicant, in order to complete the formal filing requirements.

You cannot pay fees to the EPO by credit card.  Your IP advisor may be able to pay on your behalf, or alternatively, you can pay by bank transfer. Payments and transfers to the EPO should be made to the following account with Commerzbank in Germany: Nr. 3 338 800 00 (BLZ 700 800 00)  IBAN DE20 7008 0000 0333 8800 00  BIC* DRESDEFF700  Commerzbank AG  Leopoldstrasse 230  80807 München  Germany * BIC COBADEFFXX can be used in case the bank does not recognise BIC DRESDEFF700 For more information, please visit http://www.epo.org/applying/forms-fees/payment.html#bank or  http://www.epo.org/applying/european/Guide-for-applicants/html/e/ga_c_iii_8.html

Missing a deadline at the EPO does not necessarily mean the end of the line for a patent or application. Restoration may be possible. Read our briefing paper ‘Restoration at the EPO’ to find out more.