Most people assume that by registering a trade mark in the EU, they automatically prevent other businesses from registering similar trade marks. This is not the case. The EUIPO cannot monitor all of the trade marks registered in the 28 (soon to be 27) EU countries. It is the responsibility of a trade mark owner to manage their trade mark portfolio, assess risk, and oppose any new conflicting trade mark applications. The trade mark application process in the EU allows a period where owners of registered EU trade marks can oppose new trade mark applications. Generally, if no oppositions are received, the EUIPO registers the trade mark. If you miss the opposition period, you can apply to the EUIPO to have the registered trademark declared as invalid. However, one of the conditions that must be satisfied is that your earlier registered trademark has a reputation in the EU.
There was no doubt in a recent case involving McDonalds, that they satisfy this reputation condition. In 2008 a Singaporean company applied to register the trade mark ‘MACCOFFEE’ in the EU. In 2010 the trade mark was registered. For reasons unknown, McDonalds did not oppose the application in the opposition period. McDonalds later challenged the validity of the trade mark registration and in 2013, the EUIPO declared the trade mark invalid. The General Court of the European Union have recently confirmed this decision. The long standing reputation of McDonalds and their renowned use of ‘Mc’ and ‘Mac’, were leading factors.
Is a reputation in the EU akin to that of McDonalds the benchmark for satisfying this condition? Is a reputation required in the whole of the EU? It isn’t possible to say. Each case will be dealt with on its merits. It is safe to say however that it is unlikely the Courts will regularly invalidate registered trade marks and grant similar monopolies to everyday businesses.
So what can you do? This case highlights the need to be vigilant in protecting and monitoring your registered trade marks. Registering trade marks is the first step, but ongoing protection of trade marks is key to retaining and increasing their value. If you would like more information on the services we provide, please get in touch!
Maria Hamber
