Filing for an EU Trademark is a wise decision for those who want to protect their brand across all 27 nations of the European Union at once. It is a valuable tool for ensuring that no one copies the products and hard-earned brand image.
For assistance or advice to register a trademark, an specialized trademark lawyer can provide valuable support.
This article outlines the requirements for obtaining an EU Trademark, the scope of protection, the application process, and other pertinent practical considerations to keep in mind throughout the process.
What is an EU Trademark and is one eligible to obtain it?
A registered trademark grants exclusive rights over “distinctive signs,” which include the following concepts:
Logos
Names
Images
Colours
Patterns
Shapes
Packaging of goods
Sounds
Smells (with specific requirements that shall not be explored here)
A single trademark can protect one or multiple concepts simultaneously, provided that these concepts combine to form a distinctive sign that identifies and distinguishes the brand from others.
Scope and Duration of IP Protection
An EU Trademark will offer protection for the brand across all EU countries for a period of 10 years before requiring renewal. Relevant information regarding renewal is provided in the section titled. “IP Monitoring and TM Renewal”.
Holding an EU Trademark also allows the registrant to oppose any application published for oppositions in any of the 27 countries that integrate the European Union.
How can someone apply for an EU Trademark?
Having addressed the definition and scope of a registered trademark in the EU, the next step is to explore the application process, which must be conducted through the EUIPO (European Union Intellectual Property Office).
The application process can be split up into 5 steps:
Trademark Search
File the EUIPO Trademark Application
Examination Period
Publication
Trademark Issuance
To illustrate the process, the TM application procedure will be examined under the assumption of registering a logo as a trademark in the EU.
Step 1: Trademark Search
Before submitting an application, it is advisable to verify, although not required, that the logo is not already registered. This preliminary search can be performed free of charge using eSearch plus and TMview. These platforms allow for searching by text or by uploading an image of the logo into the search bar.
After confirming that the logo is distinguishable from existing registrations, the EUIPO application process can then be initiated.
Step 2: File the EUIPO Trademark Application
The simplest method to begin the application process is online via the official EUIPO website. On this site, two options are available:
Fast Track
The Fast Track option is the most efficient way of protecting the brand as quickly as possible. On average, these applications are processed 50?ster and take just 3 weeks to be published. This is recommended for most trademarks and requires that payment be made at the very beginning – the examination period cannot begin until the payment (€850) has been received.
The Fast Track option offers a straightforward 5-step procedure guided by the website. Detailed information on these 5 steps is available here. A crucial factor to keep in mind is specifying the goods and services covered by the trademark. If the trademark applies to multiple industries or sectors, requiring numerous classifications, there may be an increased risk of complications. However, the EUIPO provides a Goods & Services builder to assist with this process, accessible here.
Advanced Form
The Advanced Form should only be used for more complex applications involving a customized goods and services submission, a collective mark, an international trademark transformation, or use more than one language in the application.
Step 3: Examination Period
After submission, an EUIPO examiner will assess the trademark application and notify within one month if any issues are identified. These issues could range from minor errors in the form that can be easily corrected to concerns about the distinctiveness of the logo, for instance.
Typically, most issues are minor mistakes. In such cases, there is a two-month period to rectify any problems and proceed with the trademark application process.
Step 4: Trademark Publication
Once provisionally approved, the trademark will be published in the EU Trademark Bulletin. This publication period lasts for three months, during which third parties can examine the mark and file a notice of opposition if they believe it is too similar to or a copy of their own trademark. Should an opposition be filed, the application process may be delayed for over two years due to the length of the opposition procedure.
Step 5: Trademark Granting – Registration certificate issuance
If no third parties have filed oppositions and the application is in order, the trademark will be approved by the EUIPO. Within six months of publication, a registration certificate will be issued. This document confirms the exclusive legal right to use the trademark throughout the European Union. However, the process does not end there...
Follow-up: IP Monitoring and TM Renewal
IP Monitoring
Even with the intellectual property rights granted by the new trademark, the brand is not entirely free from risk. It is now necessary to actively monitor and ensure that no one else attempts to use the brand for their own commercial purposes.
Trademark Renewal
It is important to remember that the trademark protection through the EUIPO is valid for only 10 years. After this period, a renewal application must be submitted. It is advisable to manage this process carefully or to engage an IP lawyer, as the EUIPO does not send reminders when the protection period is nearing its end.
Conclusion about EU Trademark
It is hoped that the information provided has made the trademark application process clearer. For those seeking to extend IP protection beyond the EU, an alternative procedure for registering an International Trademark through the WIPO (World Intellectual Property Organization) is available, which offers global brand protection. Should there be any questions, consulting with an experienced IP specialist is encouraged.
For additional details, visit the Moeller IP homepage and services page.
