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.
Update and critical assessment (as of June 17, 2026)
What we described in 2022 as an ad hoc, unwritten practice has since been codified – and, in our view, the codification has made the problem worse rather than better. By the 14th sanctions package (Council Regulation (EU) 2024/1745, applicable from June 25, 2024), a new Article 5s of Regulation (EU) No 833/2014 now requires the EUIPO and the national offices not to accept new applications, or any request or submission in a pending procedure, where the applicant or requestor is a Russian national, a person resident in Russia or a legal entity established in Russia – expressly including applications filed jointly with EU parties. The application is treated as if it had never been filed, and the office is told it need issue no formal decision.
We consider this regime, and the practice that preceded it, to be incompatible with the European Union’s own international and constitutional commitments. Our reasons:
- It breaches national treatment under the Paris Convention. Article 2 of the Paris Convention guarantees the nationals of every member state the same industrial-property protection as a state grants its own nationals; Russia and all EU states are bound by it. Refusing access to registration purely on grounds of nationality, residence or place of establishment is a textbook denial of national treatment – and, unlike the TRIPS Agreement, the Paris Convention contains no national-security exception on which the EU could rely.
- It breaches the TRIPS Agreement. TRIPS incorporates the Paris Convention (Art. 2(1)) and adds its own guarantees of national treatment (Art. 3) and most-favoured-nation treatment (Art. 4). The blanket exclusion of one nationality offends both. The EU’s only plausible defence is the narrow security exception in Art. 73, which is confined to measures taken in “time of war or other emergency in international relations” to protect “essential security interests” – a high threshold that is difficult to reconcile with denying private, war-unconnected businesses the ability to register a trademark, and whose invocation is itself reviewable.
- It is incompatible with the Madrid Protocol and the PCT. Under Article 5 of the Madrid Protocol, a designated office may refuse protection only on grounds admitted by the Paris Convention, by a reasoned provisional refusal issued within strict time limits. Simply “not accepting” a designation, deeming it never filed and issuing no refusal at all, has no basis in that treaty machinery – a concern echoed publicly by the International Trademark Association (INTA), which has warned that Article 5s appears to conflict with the Paris Convention, the Madrid Protocol, the PCT and the Trademark Law Treaty.
- It denies due process and the right to an effective remedy. A framework that, by design, issues no decision, gives no reasons, sets no time limit and offers nothing to appeal is irreconcilable with the right to good administration (Art. 41 of the EU Charter of Fundamental Rights), the right to an effective remedy (Art. 47 of the Charter) and the procedural guarantees of Articles 41 and 62 of TRIPS, which require that final administrative decisions on the acquisition of rights be reasoned and open to review.
- It interferes disproportionately with property. A trademark – and even a trademark application – is a possession protected by Article 17 of the Charter and Article 1 of Protocol No. 1 to the ECHR. A nationality-wide bar that also sweeps in joint applications with EU undertakings, and businesses that merely happen to have a place of establishment in Russia, is strikingly over-inclusive. The EU already had a precise, individualised instrument for genuinely dangerous actors – asset freezes against listed persons under Regulation (EU) No 269/2014. Replacing targeted designation with collective exclusion by nationality fails the proportionality test that Article 52(1) of the Charter demands of every restriction of fundamental rights.
- It penalises private parties for the conduct of their state. Lawful sanctions target those responsible. Excluding an entire nationality – applicants who are not party to the conflict and may oppose it – operates as a collective measure and undermines the principle of individual responsibility on which the legitimacy of restrictive measures rests.
Our own 2022 case illustrates the rule-of-law deficit in concrete terms: a recordal request was suspended indefinitely by a telephone call, with no written decision, no stated legal basis beyond an “internal communication,” and an official who could only say he was following orders – affecting a company whose sole connection to Russia was a place of business there alongside an EU subsidiary. Codifying that approach in Article 5s has given it a statutory label, but not the legal basis in treaty and constitutional law that it still lacks.
In fairness, we must add the obvious caveat: Article 5s is currently valid and binding EU law, and the EUIPO is obliged to apply it unless and until it is annulled or read down by the Court of Justice of the European Union. The arguments above are our reasoned legal assessment of why that outcome is, in our view, warranted – not a statement that any court has yet so held. The European Commission’s (non-binding) FAQs set out the opposite position and should be consulted by anyone affected.
Photo: © MPD01605, [CC BY-SA 2.0]
