Connections between the EUTM and National Trademarks

An EUTM does not replace national trademarks. It is possible to continue applying for registration of the latter at the corresponding central Industrial Property Offices of the Member States of the EU. Under these circumstances, an EUTM or EUTM application may be invoked against an application for a national trademark (Art. 4.2 of the Council Directive of the European Union, to approximate the laws of the Member States relating to trademarks).

The applicant for an EUTM may claim the seniority of an earlier trademark registered in his name in a Member State (including Benelux and international trademarks). Seniority has the effect that, where the proprietor of the EUTM surrenders the earlier trademark or allows it to lapse, he is deemed to continue to enjoy the same rights (for the Member State in question) as he would have had if the earlier national trademark were still registered.

The applicant for or proprietor of an EUTM may request the conversion thereof into a national trademark application or registration if the EUTM application is refused, withdrawn or deemed to be withdrawn, or if the EUTM ceases to have effect. However, conversion will not take place when the EUTM has been revoked for non-use (unless conversion is requested precisely in a Member State where the EUTM has been put to use) or when the trademark is affected by a ground for refusal, revocation or invalidity in the Member State where conversion is requested.

The request for conversion must be filed at the EUIPO (Art. 139 EUTMR), which checks to see if it meets the required conditions. Once the request is transmitted to the central Industrial Property Office of the Member State where conversion is sought, the latter in turn may request: (a) payment of a national application fee; (b) a translation of the application and accompanying documents into the official language of the country; (c) indication of an address for service; (d) a representation of the trademark in the number of copies specified by the State in question.