IP is a valuable asset that can support you when doing business overseas. An Australian patent, trade mark, design or plant breeder’s right does not secure your rights outside of Australia. You should consider IP protection in the countries that you are planning on doing business, including manufacturing, or selling products online.
Please note, IP registration and protection can be a complex process, especially in an international context. It is recommended that you seek advice from an IP professional.
The European Union (EU), with 27 member states, is the world’s largest trading bloc. As a single market, the EU is the world’s second largest economy (behind China and ahead of the USA) and is one of Australia's largest trading partners. Two-way merchandise and services trade was valued at A$99.6 billion in 2016-17.
The EU has the power to legislate for member states on IP matters, though member states may implement certain IP arrangements differently at the national level. Therefore, it is important to understand the specific IP environment of each relevant member state.
IP protection in the EU
In the EU, you can apply for EU-wide patent, design, plant variety or trade mark protection (known as a unitary IP right). For example, owners of trade marks, designs and plant varieties rights can register a single right at the European Union Intellectual Property Office (EUIPO) which has effect across the EU. Patent owners can use the centralised European Patent Office (EPO) to file a patent application, resulting in a bundle of national patents. Geographical indications can also be obtained with effect across all 27 member states.
You can also apply for IP protection on a national basis in individual countries of interest.
The IP system in the EU is sophisticated and can be both complex and expensive given the number of different national and EU-wide rights available. Fees to file applications for IP rights can be significantly more expensive than that incurred in Australia.
The EU also provides for the protection of certain kinds of geographical indications (GIs), currently limited to GIs for agricultural products and foodstuffs, wines, spirits and aromatised wines.
The UK is no longer an EU member state. The impact of Brexit on IP rights is outlined by the UK Government at GOV.UK.
An address for service in the EU and a local agent or attorney may be required when seeking IP registration in the EU.
- Due to the number of countries comprising the EU, there are several options for trade mark applicants to seek protection. There are pros, cons and relevant considerations for each. It is important to consider which option is best for your situation and an IP professional may be able to better navigate these issues.
- Trade mark applications may be submitted by:
- National route - Applications can be made directly with the national trade mark office of an EU member state, such as the German or French IP Office. A national trade mark can generally only be enforced in the country in which it is granted.
- Regional route – This is a specialised regional option for applicants who want protection in Belgium, the Netherlands and/ or Luxembourg. Applications can be made to the Benelux Office of Intellectual Property (BOIP).
- EU-wide protection - Applications for a European Union Trade Mark (EUTM) through EUIPO. The EUTM covers all EU member states and may only be registered, assigned or cancelled in respect of the whole of the EU. EUTMs are registered for 10 years from the application’s filing date and may be renewed indefinitely for further periods of 10 years. EU wide protection of a EUTM can also be accessed via the Madrid System.
- International route – Applications, based on an existing Australian trade mark, can be filed via the Madrid System for the international registration of trade marks– note that not all EU member states are party to the Madrid system.
- When deciding on whether or not to enter the EU with your trade mark (and ideally before you apply for a trade mark in Australia), you should consider two things when applying for an international application through the Madrid system.
- Firstly, you may wish to search the Global Brands Database to make sure your chosen trade mark is available to be registered.
- Secondly, acceptable claims for goods and services vary across the world. Consider consulting the Madrid Goods and Services Manager database, which outlines what claims are acceptable in various jurisdictions globally.
- Unregistered trade marks may have rights in some EU member states.
- The EU is a linguistically diverse region. There are 24 official languages and numerous others are widely used. The official languages of the EUIPO are English, French, German, Italian and Spanish. Applicants using word elements in their trade marks may need to consider protecting translations and transliterations.
- Application for patent protection in the EU may be done in a couple of ways:
- National route - Directly filing patent applications with the national patent office of each EU member country in which protection is sought.
- Via the European Patent Office - Filing a single patent application with the EPO and designating each EPO member state in which protection is sought. The EPO acts as a Receiving, Designate, and Elected Office and as an International Searching and Preliminary Examining Authority under the Patent Cooperation Treaty (PCT).
- Each designated national patent office will assess the application. Inventors and businesses are not granted a single European patent, but rather accumulate a “bundle” of national patents.
- The EPO’s membership includes countries that are not part of the EU such as Switzerland, Norway and Turkey.
- Each national patent is enforceable only in the country in which it was granted.
- The Patent Prosecution Highway (PPH) Pilot Program between IP Australia and the EPO commenced in 2016 and moved to an ongoing basis in 2022. Under the PPH, a patent applicant who has received a ruling that at least one claim in an application is patentable/allowable will be able to fast-track examination of a corresponding application filed with the other PPH partner's IP Office.
- In the EU, applicants can apply for a design right through the relevant national IP registry.
- Design owners can also apply for a Registered Community Design (RCD) through the EUIPO. The process is relatively quick, with no requirement for a substantive examination. The RCD covers all EU member states and may only be registered, assigned or cancelled in respect of the whole of the EU.
- The RCD is valid initially for five years, then can be renewed in five-year blocks for a maximum of 25 years.
- Unlike Australia, unregistered designs are also granted automatic protection in the EU for three years from the date the design is first made available to the public in the EU. This protection cannot be extended.
- The EU is a member of the Hague Agreement and can therefore be designated in an international application where the applicant is able to establish entitlement. Australia is not currently a member of the Hague Agreement
- Like Australia, copyright arises automatically at the time of creation of an eligible work.
- Various EU directives and regulations act to harmonise copyright law across member states, though some national discrepancies remain.
- The EU Commission is modernising the copyright framework through a Digital Single Market in the short-term and a single copyright code in the long-term.
- The term of protection varies depending on the type of work. In general, most published works are protected for the life of the author plus 70 years.
- Plant variety owners can apply for registration of a national plant variety right through a national registry – typically either an IP office or agriculture ministry.
- Plant variety owners can also apply for registration of a Community Plant Variety Right through the Community Plant Variety Office (CVPO). Community Plant Variety Rights are valid throughout the EU and last for 25 years, or 30 years for vines, potatoes and trees.
Enforcing your IP rights in the EU
It is your responsibility to protect your IP. You should actively monitor the marketplace for any unauthorised use of your IP.
It may be useful to register your IP with the EUIPO European Observatory on Infringements of Intellectual Property Rights (the Observatory) to assist in the prevention of infringing products being exported or imported. Trade marks, patents, designs and copyright can all be registered with the Observatory’s IP enforcement portal. Enforcement authorities across the EU have access to the database facilitating the enforcement of IP rights.
IP law is complex. If legal action is necessary, you should consult a legal professional who specialises in IP law.
Doing business in the EU
Before entering the business market in the EU, there are a number of factors to take into account including culture, politics and business etiquette.
For assistance with market access and trading with the EU, access the Austrade country profiles for the various member states. These also include extensive information about doing business in the EU.
- European Union IP Office
- Benelux Office of Intellectual Property
- European Patent Office
- Community Plant Variety Office
- Madrid System
- Hague Agreement
- European Observatory on Infringements of Intellectual Property Rights
- IP enforcement portal
- Export Council of Australia
- Professional advice – If you are considering exporting to the EU, it is recommended that you contact an IP professional to advice on local IP, customs and other laws regulating imports and trade in the EU.