Conversion of an EU trade mark

Conversion is the mechanism that allows an EU trade mark application or registration to be converted into national trade mark applications in one or more Member States. Provided for by Regulation (EU) 2017/1001, it applies where the application is refused or withdrawn, or where the trade mark ceases to have effect. The resulting national applications retain the filing date of the EU trade mark and, where applicable, its priority date and the seniority claimed.

Cases where conversion is available or excluded

Conversion is available after a refusal of registration, a withdrawal of the application, a surrender, a failure to renew or a decision of invalidity or revocation. It is excluded in two sets of circumstances. Where the trade mark has been revoked for non-use, conversion is possible only in a Member State where use would have been considered genuine under national law. Where the ground for refusal or invalidity applies to one Member State, in particular an absolute ground relating to the language of that State, conversion is excluded for that State but remains possible elsewhere.

Procedure and time limits

The request is filed with the EUIPO within three months, which in principle run from notification of the decision or from the date on which the trade mark ceased to have effect. It is subject to payment of a conversion fee. The Office checks its admissibility and transmits it to the designated national offices, before which the applicant pays the national fees and meets local requirements, in particular as to translation and representation. Failure to file the request in time results in the definitive loss of the benefit of the filing date.

Interaction with the Madrid system

Where protection in the Union results from an international registration designating the European Union, conversion may cover, in addition to national applications, the designation of Member States party to the Madrid Protocol, with the date of the international registration or of the subsequent designation. This mechanism operates alongside the transformation provided for by the Protocol itself where the international registration is cancelled following a central attack.

Key points

Conversion offers a second chance where the EU trade mark fails or disappears, by preserving the filing date in the Member States where no obstacle exists. The three-month time limit is mandatory. As soon as a refusal or adverse decision is notified, the States where protection remains useful should be identified and the national fees and representation costs budgeted. In the event of revocation for non-use, the path is narrow and requires genuine use in the State concerned.

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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.

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