Saving a Failed EUTM: Strategic Conversion to National Applications

A refusal from the EUIPO is often seen as a fatal blow to a brand's European strategy. However, the EUTM system contains a sophisticated ""Plan B"" known as conversion. This procedure allows an applicant to transform their failed or withdrawn EU-wide application into individual national applications while maintaining the original filing date — effectively ""saving"" the priority of the mark in territories where no conflict exists.

What Is Conversion?

Conversion is a two-tier process designed to mitigate the risks of the EUTM's unitary character. If an application fails because of an obstacle in just one country — such as a descriptive meaning in the Finnish language or a prior right in Portugal — the applicant can ""convert"" the application into national filings for the remaining 26 Member States.

This ensures that the time, effort, and priority position established by the original filing are not completely lost. The converted national applications are treated as if they had been filed on the same date as the original EUTM.

Legal Basis and Trigger Points

Conversion is governed by Articles 139 to 141 of the EUTMR. An applicant can request conversion in the following scenarios:

• The EUTM application has been refused by the EUIPO.
• The EUTM application has been withdrawn by the applicant.
• A registered EUTM has been declared invalid or revoked.

In all cases, the conversion request must be filed within a strict three-month window following the final refusal or date of withdrawal.

How the Process Works

Once the conversion request is filed, the EUIPO examines whether the request is admissible and then transmits it to the national offices of the chosen Member States. From this point, the process moves from the EU level to the national level.

Each national office applies its own local laws and fees to the converted application, though it will honour the original EU filing date. This ""priority cascade"" is the most valuable asset in the conversion process — it blocks any competitors who may have filed similar marks in the interim.

When Conversion Is Not Available

Conversion is not permitted in Member States where the grounds for the original EUTM refusal also apply. For example:

• If an EUTM is refused because it is descriptive in the German language, conversion will be blocked in Germany and Austria.
• If a mark is successfully opposed based on a Spanish national right, conversion is prohibited in Spain.
• If the EUTM was revoked for non-use, conversion is not available — the applicant cannot escape non-use consequences by converting to national filings.

These restrictions prevent applicants from using conversion to circumvent a legitimate legal barrier in a specific territory.

Strategy: Conversion vs. Appeal

When faced with a refusal, an applicant must decide whether to appeal the EUIPO's decision or convert the mark. An appeal is a centralised attempt to save the entire 27-country right, but it can be expensive and take one to three years.

If the obstacle is limited to a single country, it is often more cost-effective to withdraw the EUTM application and convert it into national filings for the rest of the EU. This bypasses the centralised conflict and secures protection in the territories that matter most.

The ""Nightwatch"" Decision: Tactical Withdrawals

A significant tactical development came with the Grand Board of Appeal's decision in the ""Nightwatch"" case (R0497/2024-G). Previously, an EUIPO refusal in one country could immediately block conversion in that country.

The Grand Board clarified that a decision only becomes ""final"" once the appeal period has expired. This means that if an applicant withdraws their EUTM during the two-month appeal period, they can still convert the mark in all Member States — because the refusal never became legally final.

This provides a vital strategic window. An applicant who receives an unfavourable decision can withdraw before the appeal period closes and convert the mark nationally, preserving options even in the country where the EUIPO raised the objection.

Maintaining Priority Dates

The preservation of the filing date is the ""gold standard"" of the conversion system. In trade mark law, being first is everything. By maintaining the original date, the converted national marks will ""leapfrog"" any competing applications filed during the months or years while the EUTM was being examined.

This is particularly critical for brands that have already launched products and need to ensure their rights remain continuous and uninterrupted.

Cost and Strategic Considerations

Conversion comes with costs. National filing fees must be paid separately in each designated country, and the applicant may need to engage local attorneys where professional representation is required. Translation costs may also apply.

Applicants should make strategic selections when choosing which countries to convert into. Filing in all 26 remaining Member States is possible but may not be necessary. A targeted approach — focusing on key commercial markets — can reduce costs while still achieving meaningful protection.

Common Mistakes

• Missing the three-month deadline: The conversion request must be filed within three months of the EUTM ceasing to have effect. Missing this deadline means losing both the right to convert and the filing date.
• Requesting conversion in the blocking country: If the EUTM was refused because of a conflict in a specific Member State, conversion to that country will be denied.
• Assuming conversion is automatic: National offices will still examine the converted application under domestic law. The mark must pass national examination independently.
• Ignoring the ""Nightwatch"" window: Failing to consider tactical withdrawal during the appeal period, which can preserve conversion options in the blocking country.
• Converting to too many or too few countries: Filing in every available country may be unnecessarily expensive; filing in too few may leave significant markets unprotected.

Key Takeaway

Conversion is the ultimate ""safety net"" of the EUTM system. It allows businesses to pivot their strategy from a centralised unitary right to a decentralised cluster of national rights — without losing their place in line. By understanding the timing, the blocking rules, and the ""Nightwatch"" window, brand owners can rescue their intellectual property from the consequences of an EU-wide refusal.