5-2-4 Post-registration Scenarios: Definitions

The change of ownership of an EU trade mark (EUTM) application or registration from one entity to another as a result of an assignment, inheritance, merger, division, etc. It may include all or be limited to some of the goods or services for which the mark is registered or applied for.

Splitting the registration into different parts on the EUTM proprietor’s own motion (not available for international registrations under the Madrid Protocol designating the EU). It is particularly useful in order to isolate a disputed trade mark for certain goods or services and maintain the registration for the remainder. The goods and services must be clearly defined, with no overlap between the goods and services that remain in the original application or registration and those in the new application(s) or registration(s). The two specifications taken together must not be broader than the original specification.

It refers to a legal action directed toward property, rather than toward a particular person, allowing the owner of the right the opportunity to recover, possess or enjoy a specific object. These rights may apply to trade marks or designs. They may consist, inter alia, in use rights, usufruct, pledges, securities, warranties, bails or sureties.

It is a contract by virtue of which the owner or applicant of a trade mark, whilst retaining their ownership, authorises a third person to use the trade mark in the course of trade, under the terms and conditions set out in the contract. It can be exclusive or non-exclusive, it can be limited to only some of the goods or services, it can be limited territorially to a part of the Union, it can be granted for a limited period of time.

A small change introduced to the representation of the mark providing the change relates to the proprietor’s name and address and does not substantially affect the identity of the trade mark as originally registered. The Regulations do not provide for the possibility of making changes in other elements of the EUTM registration.

The act by which a court officer appropriates a debtor’s property, following a judgment of possession obtained by a plaintiff from a court. In this way a creditor can recover its claim from all of the debtor’s goods, including from its trade mark rights.

At any time after registration a European Union trade mark (EUTM) may be either wholly or partially given up by its owner, i.e. in respect of all or some of the goods and services. It has procedural and substantive effects. In procedural terms, when the ___________ is entered in the Register, the European Union trade mark ceases to exist and any proceedings involving the mark before the Office terminate. The substantive effects of _____________ vis-à-vis third parties comprise the EUTM owner renouncing any rights arising from its mark in the future.

This is the bridge between EU trade marks and national marks. If an application is refused, or the EU trade mark ceases to exist, either because it has been abandoned, refused or cancelled, it can be turned into one or more national applications while maintaining the EU filing date.

The owner of an earlier trade mark registered in a Member State, including a trade mark registered under international arrangements having effect in a Member State, who holds an identical EU trade mark (EUTM) for goods or services that are identical to or contained within those for which the earlier trade mark was registered, may, for the EUTM, claim the ______________of the earlier trade mark in respect of the Member State in or for which it is registered. Once the claim is acepted, the owner may decide not to renew the earlier national registrations. If the earlier registered national mark is abandoned or allowed to lapse, the owner would still be in the same position as if the earlier trade mark had continued to be registered.

Filing a document before the expiry of the registration to prolong it for another 10-year period and prevent the registration from expiring.