In the case of a requested registration of a change of ownership of a registered EU trademark we have been informed by the European Union Intellectual Property Organisation (EUIPO) that the office is now making differences in the proceedings based on the place of business or nationality of the customer, which may constitute an act of discrimination in violation of EU law and international law.
On April 20, 2022, we filed a request with the EUIPO to register a transfer of ownership from a company based in the Czech Republic, which we have represented for many years, to a company based in the Russia Federation. We also filed documents proving the entitlement of the Russian company to the EU trademark. The Czech company was bought by the Russian company. We did not receive any notification by the EUIPO and on May 18, 2022, we filed a reminder letter on the same date.
We received a telephone call on May 19, 2022 from a First Line officer of the EUIPO Information Center. In the conversation, the First Line officer informed us that our request could not be processed because of an “internal communication” ordering 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. All such requests should be suspended or kept “pending to take action”. In other words, our request could not be processed.
The reason provided in the internal communication was allegedly 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 have discussed discussed the case with the First Line officer in some more 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 should be provided and a detailed reason, why the law is applicably, should also be given. The EUIPO officer responded that he could not provide a legal basis besides the internal communication and that he is only following the orders in the communication. He did not have any further information. Further, we asked the officer why in opinion of the EUIPO the interest of non-Russian applicants and proprietors could be affected by a registration of a transfer, which is 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 a response.
Moreover, we have been informed by the EUIPO First Line officer 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 applied equally, independent from the place of business and other non-relevant factors. We do not know of any other cases at the EUIPO, wherein a request was not processed, because the client 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.
