What is “all or nothing” principle in EU trademark registration?

If you are interested in protecting your trademark, probably you know that the protection a registered trademark grants you is not worldwide but rather territorial, for example, having a US trademark enables you to enforce your rights only in the US. Likewise, an EU trademark gives you coverage in all 28 member countries of the EU but it does not protect you in the US.

The EU applies an “all-or-nothing” principle when it comes to acceptance of a trademark for registration.

What does it mean?

It means that an EU trademark application is denied registration if it has grounds for refusal in only one member state. For example, the word “Casa” means “House” in Spanish, so you can’t get registration in the EU for “Ideal Casa” if you are selling “house accessories” or offering “housing service” as such a trademark may be considered descriptive of the products or service and therefore refused on absolute grounds.

In other words, your trademark needs to be distinctive and not descriptive of the products and services that you offer under the trademark in all the member states of the EU. In this way, the EU is able to give you protection in all its member countries. If you get an EU registration, you either get it for the entire EU or none at all.

However, in case an EU trademark application is refused on such grounds, it can be converted into a national trademark application with the same filing date in other EU member countries where the ground of refusal is not applicable. But the protection will be limited to that particular country only. Additionally, converting an EU trademark into national filings will be expensive and more time consuming.

Similarly, earlier rights can be enforced from a party that doesn’t have an EU trademark rather a national one from an EU member state. That means if a party opposes the registration of your EU trademark application, their opposition will be taken into account even if they don’t have an EU registration.

How to increase chances for your EU trademark application to achieve registration? Conduct a thorough trademark search (common law, Google, social media and, of course, EUIPO database). Trademark Angel can help you to determine if there are any similar trademarks in the EU to minimize the risk of getting an opposition.

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