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

We have recently encountered a concerning situation with the European Union Intellectual Property Office (EUIPO) regarding the transfer of ownership of a registered EU trademark. It appears that the EUIPO is discriminating against customers based on their place of business, registration, or nationality.

On April 20, 2022, we submitted a request to the EUIPO to register a transfer of ownership from a company based in the European Union to a company registered in the Russian Federation. We provided all the necessary documents to prove the entitlement of the Russian company to the EU trademark, as the EU company and its assets were acquired by the Russian company. However, we did not receive any notifications from the EUIPO for about four weeks. On May 18, 2022, we sent a reminder letter regarding the filed request.

On May 19, 2022, we received a phone call from a First Line officer of the EUIPO Information Center. The officer informed us that our request could not be processed due to an “internal communication” that ordered the suspension or pending action on all transfer requests involving companies from or in the Russian Federation. In other words, our request was unable to proceed.

The reason provided in the internal communication was to protect the interests of non-Russian applicants and proprietors in the European Union (EU) due to the ongoing military conflict in Ukraine.

We discussed the case with the First Line officer and emphasized the importance of applying the rule of law. We requested a legal basis for the suspension and a detailed reason for its application in our case. However, the officer could not provide a legal basis beyond the internal communication and stated that he was only following orders. Furthermore, we questioned the connection between the registration process and the conflict in Ukraine, as well as how the interests of non-Russian applicants and proprietors could be affected by a non-constitutive transfer to correct the register. Unfortunately, we did not receive a satisfactory answer from the officer.

Moreover, the officer could not provide any information about the duration of the suspension.

We have submitted a status request on the processing of our transfer request, which is currently still pending.

Our comments:

In our opinion, it is highly concerning that the EUIPO appears to be discriminating against applicants and proprietors of EU trademarks based on their place of residence, registration, or nationality. Customers rely on the EUIPO to apply the law equally to all, regardless of non-relevant factors. To our knowledge, there have been no other cases at the EUIPO or any national trademark office in Europe where a request was not processed simply because of the customer’s nationality.

Furthermore, the proprietor or applicant of an EU trademark is generally not a party to the military conflict in Ukraine. In this specific case, the company operates internationally and only happens to have a place of business in Russia and a subsidiary in the Czech Republic following a merger.

It is particularly concerning that the suspension was based on an “internal communication” at the EUIPO, without a legal basis or reference to any applicable law. The representatives of the proprietor were only informed of the suspension through a phone call, without receiving a written decision following the conversation.

Foto: © MPD01605, [CC BY-SA 2.0]

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