Conversion Procedure in EU Trademark Registration Official Examination

Official Examination in the Conversion Procedure of EU Trademark Registration

In the field of international intellectual property, the EU trademark has drawn significant attention due to its wide coverage and strong legal effect. According to the regulations of the European Union Intellectual Property Office EUIPO, when a trademark application or registration in one member state conflicts with an EU trademark, the conversion procedure can be initiated to safeguard the legitimate rights and interests of the rights holder. This procedure not only reflects the characteristics of the integrated internal market within the EU but also demonstrates its high regard for the protection of intellectual property.

At the beginning of 2024, a dispute involving an Italian company and an EU trademark attracted widespread attention. The company's trademark had been registered in Italy for many years and had accumulated considerable fame in the market. However, as the business expanded across the entire EU region, the company discovered that another company’s EU trademark bore a high degree of similarity to its logo, potentially causing brand confusion. Consequently, the company submitted an application for the conversion procedure to EUIPO, requesting the conversion of the EU trademark into an Italian national trademark while retaining the original priority date.

According to relevant EUIPO regulations, during the conversion procedure, applicants must provide substantial evidence proving that their original trademark has distinctiveness and influence in the relevant market. They must also meet specific time limit conditions, namely submitting the application within three months from the date of knowing the announcement of the EU trademark registration. In the aforementioned case, the Italian company timely provided multiple pieces of evidence including sales data, advertising materials, and consumer feedback, ultimately gaining approval from EUIPO.

It is worth noting that the conversion procedure does not automatically result in approval. EUIPO will conduct a comprehensive review to ensure that the new application meets all statutory requirements. For example, the review covers whether changes have occurred in the graphic elements of the trademark and whether the classification of goods and services is consistent. At the same time, for any potential conflicts caused by the conversion, EUIPO will take corresponding measures to address them.

In recent years, with the increasing frequency of cross-border trade, the number of similar cases has risen. In response, EUIPO has continuously optimized processes to improve efficiency, striving to provide more convenient services for rights holders. For instance, through online platforms, applications can be submitted and documents uploaded, significantly shortening the processing cycle; specialized teams are established to coordinate and communicate on complex cases, ensuring that each step is followed up by a dedicated person.

The conversion procedure in EU trademark registration provides an effective approach to resolving transnational intellectual property disputes. It not only safeguards the legitimate rights of rights holders but also promotes the formation of a fair competitive environment. In the future, as the process of global economic integration accelerates, the importance of such mechanisms will become increasingly prominent. For Chinese companies hoping to enter the EU market, understanding and mastering this rule is particularly crucial.