Frequently Asked Questions
Frequently asked questions and answers about patent and trademark law.
For further questions please contact:
- Alexander R. Schlee
- (310) 545-9851
- alex@schleeip.com
- Pascal A. Schlee
- (310) 545-9851
- pascal@schleeip.com
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Registered Community Designs (RCD)
What qualifies for protection as an RCD?
The Regulation defines that: ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. The requirements should therefore be fairly similar to a U.S. Design Patent Application.
Where do RCD applications have to be filed?
Who can be the applicant of an RCD application?
When should an RCD application be filed?
What is the grace period?
What priority may the applicant claim?
A 6-month priority can be claimed from any prior design patent or utility model application filed in any of the Paris Convention countries or in any of the WTO member countries.
What is the novelty requirement?
Which territories are covered by an RCD application?
What is the maximum duration?
25 years from the filing date if maintenance fees are paid on time in 5-year intervals.
What are the costs?
Comparatively low! For one design below USD 1500, about one half in official fees, the other half in attorney charges. Several designs can be combined into one application for a relatively small fee. No designation fees or validation formalities are required. Consequently, any RCD covers all of the EU without any extra costs.
What is the biggest risk?
A central invalidity suit can be filed against the entire RCD, invalidating the RCD for all EU countries. To avoid this risk, applicants may consider filing parallel national applications in the most important EU countries.
European Union Trademark (EUTM)
What qualifies for protection as a EUTM?
The Regulation defines that a ‘trademark’ may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Where do EUTM applications have to be filed?
At EUIPO (European Union Intellectual Property Office) in Alicante, Spain. This is the same authority handling the so-called Registered Community Design Applications (RCDs).
Who can be the applicant?
Any individual or legal entity, irrespective of nationality or place of residence or business.
When should the application be filed?
At the earliest convenience and particularly preferably prior to using the trademark in the market place for avoiding complications that may result from third parties registering the same trademark in good faith or in bad faith.
What is the grace period for use of the trademark in the market place?
5 years from registration during which time period the applicant needs to start a genuine use of the trademark in the market place. However, since a mere token use is not sufficient for fulfilling the genuine use requirement, it is recommendable to start a genuine use in good time prior to expiration of the 5 year grace period. A consequence of insufficient use may be unenforceability of the trademark against third parties and bears the risk that third parties may file a cancellation request relating to the goods or services for with the trademark has not been used.
What priority may the applicant claim?
A 6-month priority can be claimed from any prior trademark application filed in any of the Paris Convention countries or in any of the WTO member countries. When claiming the priority and within the 6 month time period, the owner of the priority right or prior application needs to be identical with the applicant of the later filed application. A transfer of the priority right or prior application typically requires the signature of both parties assignor and assignee. A later transfer typically has no effect as to the valid priority claim.
What language may be used for filing and processing the application?
It is possible to file the application in any of the 23 languages of the European Union. These are: Bulgarian, Croatian, Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Italian Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovenian, Spanish and Swedish. A second language needs to be designated that can be used by any third party for opposition and cancellation proceedings, chosen from the 5 official EUIPO languages English, French German, Italian or Spanish. If the first language is also one of the 5 official EUIPO languages, the third party may also use that one for launching an opposition or cancellation proceeding. Also, communication with the EUIPO can only be conducted in one of the 5 official languages.
What is the maximum duration?
Indefinite, renewable by paying the required renewal fees in 10 year intervals from the filing date of the application. However, insufficient use for 5 years or more may have the consequence of unenforceability of the trademark against third parties and bears the risk that third parties may file a cancellation request relating to the goods or services for with the trademark has not been used for more than 5 years.
What are the costs?
Relatively low compared to multiple national trademark applications, typically breaking even with national applications in 1-2 EU countries. For one class of goods and services approximately USD 1600, about 2/3 of that amount in official fees and the other 1/3 in attorney charges. As from March 23, 2016, official fees are charged per class under the Nice Classification of Goods and Services. Applicants need to provide the specific goods and/or services for which their trademark is used.
What is the biggest risk?
Based on any older trademark application or registered trademark owned by third parties in any of the EU member countries, either an opposition or a cancellation request can be filed, invalidating the EUTM for all EU countries for some or all of the goods and services subject to the opposition or cancellation request. To avoid this risk, applicants may consider filing parallel national applications in the most important EU countries. Another remedy alleviating the effects of a successful opposition or cancellation attack may be conversion of the EUTM into national trademark applications.
What Do We Do?
Schlee Intellectual Property International, P.C. provides international intellectual property services with a focus on patents, trademarks, and designs. Through its partnership with Schaumburg & Partners in Germany, the firm delivers trusted representation across the U.S., Europe, and international markets.
Patent Protection
Secure your inventions in the U.S., Europe, and international markets.
Trademark Registration
Protect your brand with U.S. and European trademark services.
Design Rights
Safeguard the appearance of your products with design protection.
International Filing
Coordinate global IP filings through the PCT system.
IP Strategy
Develop long-term intellectual property strategies tailored to your business.
Cross-Border Expertise
Over 20 years of experience handling international intellectual property matters.
Patent Protection
Secure your inventions in the U.S., Europe, and international markets.
Trademark Registration
Protect your brand with U.S. and European trademark services.
Design Rights
Safeguard the appearance of your products with design protection.
International Filing
Coordinate global IP filings through the PCT system.
IP Strategy
Develop long-term intellectual property strategies tailored to your business.
Cross-Border Expertise
Over 20 years of experience handling international intellectual property matters.
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With offices and established connections in the United States and Germany, we help clients protect their intellectual property across multiple jurisdictions with a coordinated international approach.