EUIPO

IDEAS POWERED FOR BUSINESS – THE 2023 FUND FOR SMES

Laura Bussoli - Senior Associate

Eleonora Carletti - Associate

Also for 2023, the European Union is once again making available a fund to provide financial support to small and medium-sized enterprises (“SMEs”) based within the European Union that want to invest in the protection of their intellectual property assets, in particular, trademarks and designs/models.

The Ideas Powered for Business Fund, with an endowment of about 25 million euros, aims to prevent the economic crisis for small and medium-sized enterprises that would otherwise be forced to give up the protection of their industrial property assets.

The funds made available to companies will be provided, in the form of vouchers that will be issued, upon the application of the interested party, following the EUIPO's examination of the existence of the subjective and objective requirements provided by the Fund.

EU SMEs are classified as illustrated in the following table:

Vouchers can only be used for activities after they are issued and can only cover the following activities:

  • Voucher 1: IP pre-diagnosis services (so-called “IP Scan”). This is a tool available to SMEs, using the aid of IP experts to develop a business strategy with reference to the protection of their IP assets. The planned subsidy is for a maximum amount of 1,350 euros for each company.
  • Voucher 2: applications for registration of trademarks, designs and models up to a maximum amount of 1,000 euros for each enterprise. In more detail, it will be possible to obtain a refund of:

a. 75% refund on fees for EU trademark and/or design applications, fees for additional classes, and fees for examination, registration, publication and deferment of publication.

b. 75% refund on national or regional fees for trademark and/or design applications, fees for additional classes, and fees for examination, registration, publication, and deferment of publication.

c. 50% refund on basic fees for trademark and/or design applications, designation fees, and subsequent designation fees outside the EU. Designation fees from EU countries are excluded, as are handling fees charged by the office of origin.

Thus, vouchers can be used to obtain refund of fees in relation to trademarks and designs filed directly with EUIPO and/or member state intellectual property offices (reimbursement until 75 percent), as well as for trademarks filed through the Madrid International System and designs filed through the Hague International System (up to 50 percent reimbursement). Legal fees are excluded from voucher coverage.

You can apply from January 23, 2023, to December 8, 2023, keeping in mind that funds are limited and disbursed on a first-come, first-served basis.

The grant application must be submitted online, using the template (eForm) available at https://euipo.europa.eu/ohimportal/it/help-sme-fund-2023 and attaching documents to demonstrate the necessary subjective requirements.

Before starting the application process for the SME Fund, it is necessary to have already defined a clear IP protection strategy. Therefore, it is necessary to have all information and designs related to your IP assets (e.g., trademarks and logos, inventions, new technologies, original software, new designs, unique processes, etc.).

Clovers Law Firm is available for any additional assistance or information you may wish to have regarding the procedure to obtain EU funding.

Call for Trademarks 2022

DEADLINE : Desk opening from 9:30 a.m. Oct. 25, 2022 and until available resources are exhausted

AVAILABLE FUNDS: 2 Million Euros.

A share equal to 5 percent of the available financial resources is earmarked for the granting of facilities to proponents who, at the time of submitting the application for access to facilities, are in possession of the legality rating.

BENEFICIARIES and ELIGIBILITY REQUIREMENTS.

  • MPMIs - Micro, Small and Medium Enterprises
  • With registered and operational headquarters in Italy
  • That are properly incorporated, registered in the Companies Register and active
  • that are not in a state of liquidation or dissolution and subject to bankruptcy proceedings
  • That are owners of the trademark objects of the application

Facilities aimed at facilitating the registration of Community trademarks with the EUIPO (European Union Intellectual Property Office) and the registration of international trademarks with the WIPO (World Intellectual Property Organization).

The program includes two lines of intervention:

  • MEASURE A Measure B - Facilities to facilitate the registration of European Union trademarks with the EUIPO through the purchase of specialized services.
  • MEASURE A Measure B - Facilities to facilitate the registration of international trademarks with WIPO through the purchase of specialized services.

MEASURE A

Eligibility Requirements:

  • Having carried out, from June 1, 2019, the filing of the application for registration with EUIPO of the facilitated trademark and having complied with the payment of the relevant filing fees;

ALSO

  • Have obtained registration, with EUIPO, of the European Union trademark that is the subject of the application. Such registration must have occurred on a date prior to the submission of the application;

For Measure A, the facilities are granted to the extent of 80% of eligible expenses incurred for filing fees and eligible expenses incurred for the acquisition of specialized services and in compliance with the maximum amounts provided for each type and in any case within the maximum total amount per trademark of €6,000.00.

MEASURE B

Eligibility Requirements:

Having carried out, as of June 1, 2019, at least one of the following activities:

  • The filing of the application for registration with WIPO of a nationally registered trademark with UIBM or a European Union trademark registered with EUIPO and having complied with the payment of the relevant registration fees;
  • The filing of the application for registration with WIPO of a trademark for which an application for registration has already been filed with UIBM or with EUIPO and having complied with the payment of the relevant registration fees;
  • The filing of the application for subsequent designation of a trademark registered with WIPO and having complied with the payment of the relevant registration fees;

ALSO

  • Having obtained the publication of the application for registration in the WIPO International Register (Madrid Monitor) of the trademark applied for. The publication of the trademark application on the WIPO International Register must have occurred on a date prior to the submission of the application.

For Measure B, facilities are granted to the extent of 90% of eligible expenses incurred for the acquisition of specialized services and registration fees in compliance with the maximum amounts provided for each type and in any case within the maximum total amount per trademark of 9,000.00 euros.

For Measure B, for international registration applications filed as of June 1, 2019 for the same trademark, it is possible to make subsequent designations of additional countries; in this case the facilities are cumulative up to the maximum amount per trademark of €9,000.00.

For Measure B, for international registration applications filed before June 1, 2019, it is only possible to request facilitation for subsequent designations made after June 1, 2019, in which case the maximum amount of facilitation per trademark is € 4,000.00.

Each company may submit multiple applications for facilitations, for both Measure A and Measure B, up to a total value of € 25,000.00.

For the same trademark it is possible to cumulate the facilitations provided for Measures A and B (if in Measure B the European Union is not indicated as the designated country) in compliance with the maximum amounts indicated per trademark and per enterprise. For the same trademark, it is possible to apply for both Measure A and Measure B relief in a single application.

If an enterprise can apply for facilitation for more than one trademark, an application must be submitted for each of them, otherwise the application will be inadmissible.

The facilities under this Notice cannot be combined, for the same eligible expenses or part thereof, with other state aid or aid granted under de minimis or facilities financed with EU resources (e.g. EUIPO - IDEAS POWERED FOR BUSINESS). However, up to 100 percent of the expenses actually incurred, the facilities are available together with all general measures, including fiscal measures, which are not state aid and are not subject to the rules on cumulation.

APPLICATION SUBMISSION

  • The application is filled out exclusively through the computer procedure and in the manner indicated at [www.marchipiu2022.it].
  • The application is submitted from 9:30 a.m. on October 25, 2022 and until the available resources are exhausted.
  • The application for participation, generated by the IT platform must be digitally signed by the legal representative of the company requesting the facilitation or by the delegated special attorney on the basis of special power of attorney.

Clovers remains at the disposal of clients to provide all the advisory work.

On the evidence of use of the trademark in nullity and opposition proceedings

Not everyone knows that once a trademark has been filed and registered, it must be put into effective use by its owner: the law - both national and European - provides for an initial grace period of five years from registration, after which the owner may be required to prove the effective use of his trademark.

Evidence of use can be requested both in opposition proceedings by the trademark applicant and in opposition proceedings by the trademark applicant, with the consequence that in the absence of useful evidence, the opposition is automatically rejected.

Similarly, the evidence of use of the trademark could be requested in the framework of a revocation procedure for non-use provided for at Community level by articles 18 and 58 European Union Trademark Regulation, EU 2017/1001. Also in this case the consequences are far from trivial for the trademark owner, since if the administrative judge considers the evidence insufficient, the trademark would be declared null and void as of the date of the request for revocation and therefore cancelled from the register.

Therefore, the use of the trademark is fundamental even in all cases in which the trademark is registered: it is not sufficient to have registered the trademark in a series of product classes in order to ensure the widest possible protection, if this registration does not correspond to a genuine use of the trademark within the terms of the law.

It is therefore particularly important for the owner to collect proof of use over time, especially once the five-year grace period has expired.

It is also very important to know what evidence of use is relevant to the administrative judge.

One of the most important pieces of evidence of use are sales invoices.

As repeatedly stated by the courts such invoices must show significant and frequent volumes of sales during the relevant period (five years prior to the application for nullity or, in opposition proceedings, from the time of publication).

It should be noted that offers to sell products bearing the contested trademark on websites are not sufficient in themselves to demonstrate actual use, at most they may be relevant together with other elements such as, for example, the production of supporting documents, packaging, labels, price lists, catalogs, invoices, photographs, newspaper advertisements.

On this point, the EU Court of First Instance recently expressed its opinion in case T-1/20 of October 13, 2021, rejecting the appeal of the company Mi Indutries Inc., a manufacturer of organic pet foods, confirming the decision of the Board of Appeal of the EUIPO, which had held that the extracts from the Internet site "Amazon.co.uk" where the goods bearing the contested trademark were put up for sale simply showed that the goods in question had been put up for sale, without however proving that they had actually been sold and without providing any information on the volume of any sales.

According to the case-law, the actual use of a trademark cannot be proven by probability or presumption, but must be based on concrete and objective elements that demonstrate the actual and sufficient use of the trademark in the market concerned.

According to the Implementing Regulations, furthermore, the evidence of use must cover the place, duration, extent and nature of the use that has been made of the contested trademark. It is also essential that the evidence covers the relevant five-year period: further evidence outside this period will only be considered secondarily.

Furthermore, the condition relating to the actual use of the trademark requires that it, as protected in the relevant territory, be used publicly and externally. In this respect, the Court made it clear that not only sales to final consumers but also to industrial customers and professional users (B2B sales) are relevant.

Finally, the Court pointed out that even if it is not necessary for the owner to prove constant and significant use over the entire five-year period in order to escape sanctions, the obvious absence of evidence for a significant part of the period means that the use is considered insufficient.

  • Intellectual Property