Problems with EUTMs? Conversion might be a solution!

A solution for those countries unaffected by the protection obstacle or conflict is the conversion of the EU trademark into national trademarks. The conversion request is submitted to the EUIPO (European Union Intellectual Property Office); the procedure itself is carried out by the national offices. The objective of the conversion is that the national trademark also enjoys the filing or priority date of the EU trademark. The converted national trademark then undergoes a separate application procedure in the respective member state; in Austria, for instance, an already registered EU trademark is immediately entered into the national register without a new examination for grounds of refusal, and there is also no possibility of opposition by third parties.

When can conversion be requested?

Conversion can be requested whenever an EU trademark has ceased to exist. This can occur during the application procedure, if the trademark owner voluntarily withdraws the application or if the Office finally rejects the application. However, the conversion request can also be filed after the successful registration of the trademark, if the EU trademark subsequently loses its effect (withdrawal or cancellation enforced by third parties).

How does the conversion take place?

After an EU trademark has ceased to exist, the trademark owner must actively submit an application for conversion of the EU trademark into national trademarks to the EUIPO. The request must be submitted to EUIPO with all relevant information in the first or second language of the application. In addition, the conversion fee (currently EUR 200, as of September 2023) must be paid. It's important to note that the application including payment of the fee, must be completed within a 3-month period after the loss of effect of the EU trademark - specific rules govern the beginning of this period, depending on the reason for the cancellation of the EU trademark or application.

If all requirements have been met, the EUIPO examines the conversion request, publishes it and informs the designated national offices (e.g., the Austrian Patent Office) accordingly.

Procedure at the Austrian Patent Office (ÖPA)

The converted trademark undergoes a new application procedure in Austria; application fees must also be paid again. After receipt of the conversion request, the Austrian Patent Office first sends a payment request for the application fees to the trademark owner or the representative designated in the application for Austria. If the list of goods and services of the EU trademark was not filed in German and the conversion is requested before the EU trademark has been entered into the register, a German translation of the goods and services must be submitted to the Austrian Patent Office within the set time limit – along with the proof of payment. If the EU trademark was already registered before the conversion, the translation of the list of goods and services into all official languages of the European Union was already carried out by the EUIPO when the trademark was registered, and the Austrian Patent Office receives the corresponding translation from the EUIPO.

After the formal requirements have been fulfilled, the Austrian Patent Office begins the examination of the trademark for obstacles to protection. However, if the EU trademark has already been registered, it is also registered in Austria without further examination for obstacles to protection and is not subject to the possibility of opposition by third parties.

And what about EU designations of International Re-registrations?

If an EU designation of an International Registration is legally refused or loses its effect for reasons independent of the basic trademark, conversion into national designations of the International Registration is also possible here. This process is called "opting back". Such a subsequent designation (but with the original priority of the EU trademark) within the International Registration has the great advantage that the conversion into designations of several member states takes place centrally via the Madrid System, and an intervention directly before a national office in the respective country is only required in case of a refusal of protection by a national office.

authors: Kerstin Wiesegger, Christian Schumacher