EUIPO: Discrimination of Applicants and Proprietors Based on Their Place of Business or Nationality

In the case of a requested registration of a change of ownership of a registered EU trademark we noted that the European Union Intellectual Property Organisation (EUIPO) is now apparently discriminating customers in the proceedings based on the place of business, the registration or the nationality of the customer.

On April 20, 2022, we filed a request with the EUIPO to register a transfer of ownership from a company based in the European Union, which we have represented for many years, to a company registered in the Russia Federation. Together with the request, we filed documents proving the entitlement of the Russian company to the EU trademark: the EU company including all tangible and intangible assets was bought by the Russian company. We did not receive any notifications by the EUIPO for about four weeks. On May 18, 2022, we filed a short letter reminding on the filed request.

On May 19, 2022, we received a telephone call from a First Line officer of the EUIPO Information Center. The First Line officer informed us that our request could not be processed, because an “internal communication” ordered him that all transfer requests filed in the name of, or to the benefic of companies having a place of business, a registration or a nationality in the Russian Federation should be suspended or kept “pending to take action”. In other words, our request could not be processed.

We were informed that the reason provided in the internal communication was that the interest of non-Russian applicants and proprietors in the European Union (EU) should be protected in view of the ongoing military conflict in Ukraine.

We discussed the case with the First Line officer in some detail, informing him also that the rule of law should be applied, and there should at least be given a legal basis for the suspension, i.e. the law or rule should be provided and a detailed reason should be given, why the law or rule is applicably in the present case. The EUIPO officer responded that he could not provide a legal basis besides the internal communication and that he is only following the orders. He did not have any further information. Further, we asked the officer why the EUIPO believes that the interest of non-Russian applicants and proprietors can be affected by a registration of a transfer, which is non-constitutive and only to correct the register, and how there can be a connection between the registration process and the conflict in Ukraine, but we did not receive an answer.

Moreover, the EUIPO First Line officer noted that it is unclear how long the suspension would take effect.

We have filed a status request on the processing of our request for registering the transfer. This status request is currently still “pending”.

Our comments:

In our opinion, it is very remarkable that the EUIPO is apparently discriminating applicants and proprietors of EU trademarks and designs based on their place of residence, registration or nationality. In our opinion, customers at the EUIPO trust that the law will apply equally to them, independent from their place of business and other non-relevant factors. We do not know of any other cases at the EUIPO or any national trademark office in Europe, wherein a request was not processed, simple because the customer had the “wrong nationality”.

Moreover, the proprietor or applicant of a EU trademark is generally not a party in the military conflict in Ukraine. In the specific case, the company is operating internationally and only happens to have a place of business in Russia and a subsidiary in Czech republic after the merger.

It is very remarkable, that the suspension was based on an “internal communication” at the EUIPO, without giving a legal basis or a law, which was applied. The representatives of the proprietor were only informed by phone, and without a written decision following the conversation.

Foto: © MPD01605, [CC BY-SA 2.0]

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