Project acronym, trade mark and joint ownership - what procedure should we follow for a joint trade mark application? Helpline / Sample Case

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Case

The partners of our FP7 project intend to register the project acronym as a trade mark. We would like to know whether we can jointly own this trade mark and what procedure we should follow for a joint trade mark application.

Answer

Participants in EU-funded projects should consider the possibilities of registering their project acronym as a trade mark only if it will be used for commercial purposes and therefore will have a substantial commercial value. This means that the project name needs to be registered as a trade mark only if it will be used as a trade mark in order to indicate the commercial origin of products or services offered on the market.

In Horizon 2020 there are no specific rules related to the procedure to be followed if the project partners decide to protect their project acronym as a trade mark. Therefore, it is up to the partners of the project to agree on clear rules on the procedure to be followed when applying for a trade mark and to define the responsibilities for filing a trade mark registration application, maintaining (paying renewal fees), monitoring and enforcing trade mark rights.

As regards the ownership of a trade mark that will protect the project acronym, any solution is possible as long as this solution reflects best the intentions of the parties, and meets all partners' expectations and future exploitation interests.

Indeed, one of the possible options is to jointly file and own a trade mark. In this case, all partners could agree to designate one partner amongst themselves as their representative - this partner would file the trade mark application on behalf of all project partners. The trade mark would be owned by all partners, but an agreement could be reached as to its exploitation with regard to the products and/or services and territories of registration (e.g. the partners could agree on a geographical split of the market for exploitation purposes). However, joint ownership is not always advisable, as it often results in legal and financial complications (linked for example to the splitting of costs).

An alternative option would be to have one single owner of the trade mark - one of the project partners. This partner could file for trade mark protection over the project name and be the only trade mark owner with regard to the products and/or services and the territories covered by the registration. In this case, this partner could license the trade mark rights to each of the partners in order to allow them to exploit it, for example in a specific territory. This can be done by way of licensing agreements signed between the partners of the project.

In most European countries trade mark applications can be filed by more than one applicant, so-called multiple applicants. However, the administrative procedure of examination of a trade mark application and the requirements related to the person(s) entitled to file a trade mark application differ from one jurisdiction to another. Therefore, and particularly if the project partners decide to jointly file a trade mark application, it is advisable to be aware of the rules related to the registration procedure applicable to the relevant Intellectual Property Office. Please note that it is usually recommended to resort to the services of a trade mark attorney in order to file for trade mark registration. A trade mark attorney will help you choose between several routes to registration - national applications in each national IP office, EU-wide application through OHIM, international application through a system administered by WIPO – and will help you make sure that the protection chosen matches your commercial strategy.