The EUIPO defines the Conversion of the European trademark as the conversion of an application or registration of a European Union trademark into one or more national trademark applications.
This is undoubtedly an option to consider in our trademark registration strategy, as it is a truly useful tool to overcome problems caused by the unitary nature of the EU trademark.
The EUTM conversion is a useful tool in cases where, for example, a European trademark is rejected for being considered descriptive and, therefore, not suitable for registration in those member states where, due to their official language, it is perceived as descriptive or generic (for example, descriptive marks in English-speaking countries such as Ireland and Malta). In such cases, the applicant can request the conversion of the finally refused EU trademark into individual national trademark applications in those countries not affected by the rejection, where the mark will be perceived by the relevant public as perfectly distinctive.
Another scenario in which the use of this legal tool could be considered, is for European trademark applications that were denied due to opposition from an identical or confusingly similar mark in a EU country. In this case, the conversion would be possible in all remaining countries where the earlier right was not protected.
Types of Conversion
There are two types of conversion: the conversion of European Union trademarks and the conversion of an international registrations designating the EU. The concept and legal basis are the same, although there are small practical differences that we will analyse further below.
Therefore, on the one hand, the applicant or holder of a EU trademark can request the conversion of their denied application into national trademark applications in one, several, or all member states not affected by the denial.
Likewise, the holder of an international registration designating the EU can request the conversion of this final and non-appealable rejection into:
– National trademark applications in one, several, or all member states.
– “Opting back” Conversion: into Subsequent designations of one or more Member States under the Madrid System (provided that the Member State designated is part of the treaties regulating the international trademark registration system).
– A “Mix” between the two options above: local national trademark applications for some Member States (for example, for those where opting back is not possible as the country is not part of the Madrid System, as of today, for example, Malta), and subsequent designations for the remaining Member States of interest.
Phases of the Conversion Process:
The conversion process has two distinct phases:
1. EUIPO Phase: Submission of the conversion application (and payment of the corresponding fee) and examination of the application by the national Office. If the EUIPO is satisfied under formal requirement, it communicate the conversion request to the designated national offices (or to the WIPO in case of “Opt-Back” conversion)
2. National Offices Phase: “ex novo” examination of the trademark application under national law, up to final registration
– The national legislation of the Member States may require the conversion application to meet one or all of the following requirements: i) payment of a national fee ii) submission of a translation of the application and accompanying documents into one of the official languages of the Member State; iii) indication of an address in the Member State; iv) submission of a reproduction of the mark in the number of copies specified by the Member State.
National Offices Phase:
Our special interest in the subject arose from a case we encountered in the office. It was then that we realized it would be interesting to conduct a small investigation on the subject to understand the practices of each European offices in after receipt of the conversion request from the EUIPO.
Below, we will present the information we have gathered on this matter, supported by significant practical experience in the field.
It is important to note that, with a few exceptions, such as Malta, national offices usually contact the applicant or their representative once they receive the conversion request from the EUIPO. They request the necessary information, generally by email or registered letter, to the applicant or its EUIPO representative, particularly:
– Austria: The trademark applicant does not have to submit a separate application but must pay the corresponding national fees.
– Benelux: The applicant does not have to submit a separate Benelux trademark application. The procedure continues automatically.
– Bulgaria: The applicant does not have to submit a national trademark application but must provide proof of payment of registration fees and priority (if declared) and a notarized power of attorney from an industrial property representative or lawyer, if authorized.
– Croatia: The applicant must submit the completed EŽ-1 form, the translation of the list of goods and services into Croatian, and proof of payment of fees.
– Denmark: The office processes the **conversion** automatically, and the applicant does not need to submit a separate national trademark application.
– Estonia: The applicant does not need to submit a separate national trademark application, as the conversion request will be processed by the office as a national trademark application.
– Germany: Within 2 months of receiving the notification from the DPMA, the applicant must provide a contact address in Germany. If the applicant does not have a domicile, registered office, or business location in Germany, a representative is required. Within 3 months of receiving the notification, the required fee must be paid.
– Greece: The applicant must submit a conversion declaration containing a request for trademark registration, a representation of the mark, the name, residence, telephone number, and email address of the applicant, a list of the products or services for which the mark seeks protection, proof of fee payment, and a translation of the EUIPO’s conversion request into Greek by a person or authority authorized to translate it in accordance with applicable law. The deadline for submitting these documents is 2 months from the date the Greek Office notifies the applicant or the EU trademark owner that it has received the conversion request from the EUIPO.
– Ireland: The trademark applicant does not need to submit a new application.
– Italy: The applicant must submit a trademark application form (marking the “community/international” option) within 3 months of receiving the communication from the “Direzione Generale per la tutela della proprietà industriale”. This includes a copy of the EU trademark application and its translation into Italian, a copy of the original conversion application and its translation into Italian, and a statement confirming the translation’s conformity with the content of the original documents.
– Latvia: The trademark applicant must submit the conversion documents and pay the necessary fee for the national trademark application within 6 months of the Office receiving the EUIPO documents related to the conversion request.
– Lithuania: The applicant must submit the completed trademark registration application form (ZP-1 form), proof of payment of the fee for the national trademark application, a translation into Lithuanian of the conversion request and other attached documents, and an image of the mark or another form of expression. The deadline for submitting these documents is 6 months from the date the Office receives the EUIPO documents related to the conversion request.
– Malta: The office does not process the conversion request automatically, and do not send any communication to the applicant, so the applicant must submit a national trademark application on its own. The national trademark application form is available on ips.gov.mt. Again, the office usually does not notify the applicant, so one must be vigilant once the EUIPO confirms the acceptance of the conversion request to the applicant, otherwise the trademark examination will not start in Malta.
– Portugal: After the EUIPO accepts the conversion, the applicant must submit a national trademark registration application within the specified deadline. In the national application, the applicant must select the option indicating a conversion to a community trademark, indicate the application number, import the information related to the registration, and follow all system instructions until generating the data for the act’s payment.
– Romania: The trademark applicant does not need to submit a national trademark application.
– Slovakia: The office processes the conversion automatically and, if necessary, will contact the applicant for further information
– Slovenia: The applicant must designate a representative registered in the Slovenian Office’s Representative Register, present a notarized power of attorney, and pay the required fees.
– Spain: The trademark applicant must submit the documentation required by Article 86.2 of Law 17/2001, of December 7, on Trademarks within 2 months of receiving the conversion request from the OEPM. The starting date of this two-month period will be communicated by the EUIPO when notifying the applicant of the transmission date of the conversion request to the OEPM. The applicant must:
– Pay the corresponding fees
– Submit a translation into Spanish of the conversion request and accompanying documents
– Designate an address for notifications (within the EU or, failing that, indicate an electronic means of notification accepted by this Office).
To submit this documentation, the applicant must use the form available in the “Application for the conversion of a European Union trademark into a national trademark” procedure on the OEPM’s electronic user area.
– Sweden: It is not necessary to submit a separate Swedish national trademark application. A national application will be established when the Swedish Office receives the information and documents from the EUIPO related to the conversion.
CONCLUSION
In conclusion, most offices process the conversion request automatically. However, this does not mean that the applicant does not have to provide certain documentation, pay fees, or be aware of the proceedings. Therefore, it is essential to understand each office’s policy practice to offer the best possible service to our clients.
The national application resulting from an EUIPO’s conversion procedure will follow its course. It will be re-examined under national legislation, published for opposition purposes, and finally, if there are no issues, the national office will issue the registration certificate.
It is worth noting that the national mark resulting from an EUIPO conversion procedure will enjoy the priority date of the denied European mark, and this is one of the major benefits of the so called EUIPO conversion procedure.
Disclaimer:
The information provided in this article may be subject to changes, so it should be considered as indicative and not as legal advice. If specific information related to a particular case is needed, it is recommended to contact a lawyer specialized in European trademark law.
For further info: europe@ipwisely.com
