Conversion of an EU Trademark Application – Possible before the Refusal of your Application takes Effect?

Has the European Union Intellectual Property Office (EUIPO) rejected your trademark application but the decision is not yet final? Consider withdrawing the application to keep the option alive to convert your application into national trademark applications in individual EU Member States – without the restrictions that apply to conversion after final refusal.

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(Source: shutterstock, image ID 2192321961)

Background

If you file a new European Union trademark application, the EUIPO will, inter alia, examine if the applied for sign is distinctive for the designated goods and services in ALL of the European Union territory. If it is not, your application will be rejected – even if the bar to registration only exists in part of the EU. This is a consequence of the unitary character of a European Union trademark which grants protection in all 27 EU Member States with just one (1) registration.

Obviously, a rejection of your trademark application based on a lack of distinctiveness or a descriptive character in only part of the EU will not invalidate your desire and need for trademark protection in those parts of the EU where the application is not descriptive, but distinctive.

In such situation, the question arises whether or not – and at which point(s) in time - the applicant is offered the possibility to convert an European Union trademark application into national applications in individual EU Member States while keeping the application date of the European Union trademark application. Remember: The application date is important if your trademark ever has to be enforced as the EU applies a “first to register” regime and the party with the earliest trademark application date will have the best rights.

Once the rejecting decision has become final, it is clear that that applicant has the right to convert its EU trademark application and to file applications in such Member States for which the EUIPO did not find a lack of distinctiveness (or another bar to registration), see Article 139(2)(b) EUTMR. But what about converting your trademark application if the rejecting decision is not yet final?

On 22 February 2024, the Executive Director of the EUIPO filed a request (the first of its kind) with the Grand Board of Appeal for their opinion on a point of law regarding the possibility of conversion despite a not-yet-final decision refusing an applied for mark. Is it possible to convert an application that has been rejected by the Office but where the rejecting decision has not yet become final? And does it make a difference if an appeal – against the first instance decision or against the Board of Appeal decision - had been filed or not?

Upon publication of the request for a reasoned opinion, relevant stakeholders were invited to submit observation and the matter was discussed.

The Decision

On 15 October 2024, the Grand Board of Appeal of the EUIPO issued its opinion on the Executive Director’s request confirming the following (see R0497/2024-G):

• As long as the EUIPO’s refusal decision has not yet become final, the applicant may withdraw the European Union trademark application.
• It does not make a difference in which instance the application is pending, that is if the application is withdrawn during the period of appeal against the first instance decision, during the appeal proceeding or during the period to further appeal a Board of Appeal decision. There is no relevant distinction between these different periods in time as long as the refusal has not yet taken effect.
• After withdrawing an European Union trademark application, any examination and appeal proceeding becomes devoid of purpose and the possibility of requesting a conversion of the application into national applications in individual EU Member States is opened up.
• There is no restriction as to the Member States in which a national application can be requested following conversion. The restriction of Article 139(2)(b) EUTMR does not apply and a request to convert a withdrawn European Union trademark application into national applications, subsequent to its non-final refusal by the EUIPO, does not constitute an attempt to circumvent the prohibition of Article 139(2)(b) EUTMR.

Strategic Advice

When you receive a decision that rejects your European Union trademark application, consider carefully if you let it take effect or if you withdraw your application before the rejection becomes final as this will influence the scope of your possibilities to convert your European Union trademark application into national trademark applications in individual EU Member States.

Should you have any questions or if you would like to discuss possibilities to convert your European Union trademark application, you are welcome to contact us by email at

or by phone at 089 55 879 870.