All you need to know for a trademark registration in European Union

Trademark Search in EU European Union: 

To register a trademark in the EU, the first preferred step is to conduct a comprehensive search of the EU IPO's database to ensure that the proposed trademark is available for registration and does not conflict with existing trademarks. A comprehensive search of the INPI's database and the EUIPOs database to ensure that the proposed trademark is available for registration and does not conflict with existing trademarks. 

 It is best if the search covers: 

1. Trademarks filed locally in the EU through the EUIPO 

2. Trademarks filed internationally designating the EU

3. Trademarks filed through the national offices of the European Union 

4. Trademarks which are deemed famous in the EU and have been designated the famous trademark status. 

While trademark searches are not required, it is best to conduct an EU trademark search prior to filing to get clearance and minimize the amount of office action received, and oppositions received. 

Trademark application in the EU: 

Trademark applications in the EU are only made electronically using an online tool with a secure payment area. Any amendment and changes required on trademarks is also completed using the same portal. 

In order to file an application to register a trademark in the EU the applicant must include the following details in the application: 

• Trademark applicant details:

• Trademark applicant name 

• Trademark applicant address

• Trademark applicant nationality 

• Trademark applicant type (individual, corporation, LLC, non-profit organization etc.…) 

• Trademark details: 

• Type of trademark seeking protection 

• Description of the trademark 

• Meaning of the trademark if any 

• A representation of the trademark, including any design elements or logos. 

• Trademark Claims: 

• Trademark priority claim if any.

• Trademark color claim if any.

• Trademark Goods and / Or trademark Services: 

• The relevant class the trademark will be registered on. 

• A clear and concise description of the goods or services to which the trademark will be applied:

1. An applicant can choose goods and services which are pre-approved, therefore minimizing the examination time, or 

2. An applicant can choose goods and services which are not pre-approved, paying additional fees at filing, and increasing the examination time period.

   
   

   
   

Process for Trademark protection in EU European Union:

Once the trademark application is completed and the relevant filing fees are settled the trademark is submitted to the EUIPO and the trademark examination goes through multiple phases as follows: 

Step 1 - EU trademark Filing Date

The EUIPO will check that a trademark filed contains all the mandatory and basic information which are required for the trademark application are properly included, correctly identify the trademark owner and provide a clear representation of the trademark, and goods. A filing date is the start of a 1-month countdown which the official fees should be paid in. EU TM basic fees must be made within one month of the filing date.  

Step 2 - EU trademark classification assessment 

After settling the basic application fees, the EUTM office examines the goods and services an applicant is seeking protection on are reviewed to assess proper classification according to the nature of goods and services. There is an automatic list of goods available which can minimize the likelihood of office action. This list is referred to as a harmonized database. 

If the EU trademark office examines the goods and notes that the goods and services are correctly classified and their nature has been clearly indicated, then the trademark will proceed to the next phase. International classification can also be found on the World Intellectual Property Organization (WIPO) nice classification database and on the class analysis tool. 

Step 3 - EU trademark Formalities assessment 

The EU trademark office will review the application filed to ensure that all the details an applicant entered on the trademark application are accurate, the language is clear and there is a signature on the required documents. 

Step 4 - EU trademark Absolute Grounds assessment 

The EU trademark office analyzes the trademark application filed to ensure that the trademark is distinctive and not descriptive.   An EU trademark can consist of any signs, in particular words (including personal names), or designs, letters, numerals, colors, the shape of goods, or the packaging of goods or sounds.

According to the EUIPO considered distinctive: 

“Consumers should be able to recognize your sign for what it is, for example as an indication of origin. It should distinguish you from other companies in the marketplace so that you can protect and build your brand identity and value.” (EUIPO site)

According to the EUIPO a trademark should not: 

“A trademark should not monopolize a sign that merely describes the goods and/or services that you offer. These signs should remain available for everybody: for you and your competitors.” (EUIPO site)

Read more on how to create a strong trademark. 

Step 5 - EU trademark translation

An EU trademark application is translated to the different languages of the European Union so that details of the trademark can be published in all the official languages of the European Union. If an applicant chose goods from the list of harmonized goods, then the translation phase of the examination will be quicker. 

Step 6 - EU trademark publication

From the date of publication onwards, third parties who believe the trademark application filed should not be registered have three months to object (oppose) the trademark application. Usually oppositions are either based on: 

Trademark Earlier Right: 

A third party can oppose a trademark registration based on an earlier right (1 or more rights) if they believe that the registration of the trademark filed will cause conflict with the previously owned mark. If any third parties would like to oppose the registration of the trademark, then they must oppose your trademark by completing a specific opposition form and paying a fee of €320. 

Trademark Absolute Grounds 

A third party can oppose a trademark registration based on absolute grounds. Absolute grounds are requirements that a trademark needs to satisfy like:

• Distinctive, 

• Non-descriptive of the business you are in and 

• Clearly represented.

If any third parties would like to oppose the registration of the trademark, then they should send a corresponding communication to the Office explaining why they believe the trademark should not be registered. The EU IP Office refers to this letter as a ‘third party observation' and it is free of charge. However, it should only be used when a serious reason for contesting the trademark exists.

If an opposition is filed, against the trademark application, then the trademark must succeed in opposition proceedings in order to proceed to registration. 

Step 7 - EU trademark Registration 

If no third party files an opposition or an observation against the trademark application filed, then your trade mark is registered and the registration is published. This is done so that other trade mark owners and the public in general are aware that this particular trademark is owned by the applicant and has proceeded to registration. 

A certificate of registration is issued two days after the publication of the registration. 

The progress of a trademark application within the EU system can be checked online on the EUIPO.

Costs relating to trademark registration are both official and professional. Official fees are fees paid to the government for processing your trademark registration and are required to be paid for each phase of the process. 

A trademark is valid for 10 years from the filing date.

A Power of Attorney

• A power of attorney signed by the applicant assigning local representation in the European Union. It is not possible for international applicants to file their trademarks directly in the EU, an office action will be issued requesting that the applicants assign an EU representative to handle the registration. 

Commercial certificate

• A declaration that the applicant engages in activities related to the class and product/services included in the application. Such a declaration can be in the form of a commercial certificate translated to any official language of the union, and the same language used for filing the application.