Proceedings before the EUIPO

Proceedings before the EUIPO, the European Union Intellectual Property Office based in Alicante, govern the acquisition, challenge and maintenance of the European Union trade mark and the European Union design. They are laid down by Regulation (EU) 2017/1001 for trade marks and by Regulation (EC) No 6/2002, as amended by Regulation (EU) 2024/2822, for designs. The Office is an EU agency whose decisions are subject to review by the General Court and then by the Court of Justice.

Registration of the trade mark

The application, filed online in one of the languages of the Union with a second language chosen from the Office’s five languages, is examined on absolute grounds for refusal only, the Office not searching for earlier rights of its own motion. It is then published, which opens a three-month period during which holders of earlier rights may file an opposition. The applicant may require the opponent to prove genuine use of its earlier mark where that mark has been registered for more than five years. Absent opposition, or once it has been rejected, the trade mark is registered for ten years, renewable indefinitely, and takes effect throughout the Union. The filing fee is EUR 850 for one class.

Challenge and appeal proceedings

A registered trade mark may be attacked before the Cancellation Division by an application for a declaration of invalidity, on absolute or relative grounds, or for revocation, in particular for lack of genuine use over five years. A design, registered without substantive examination or opposition, can only be challenged by an application for a declaration of invalidity before the Office or by a counterclaim before an EU design court. First-instance decisions may be appealed to the Office’s Boards of Appeal within two months, and then to the General Court of the European Union, whose judgment may be appealed on points of law only to the Court of Justice, subject to a prior admission mechanism.

Interplay with national courts

The Office has no jurisdiction over infringement, which falls to the EU trade mark and design courts designated by the Member States, which in France means the Paris Judicial Court. Those courts may rule on validity by way of counterclaim, and rules on related actions coordinate parallel proceedings, the court in principle having to stay its proceedings where the Office is already seised of an application for invalidity or revocation concerning the same right. Final decisions of the Office are binding on national courts, and the invalidation of an EU right takes effect in all Member States.

Key points

The EUIPO grants EU trade marks and designs after an examination limited to absolute grounds, opposition and invalidity being left to interested parties, with an internal appeal to the Boards of Appeal followed by judicial review in Luxembourg. Publications should be watched so that oppositions can be filed within three months, evidence of genuine use of one’s own marks should be kept, and any infringement action before the national court should be coordinated with proceedings pending before the Office.

---

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

Intellectual property attorney · Tell us about your situation