TM Protection Strategies in EU

Considering entering the EU market? If you are, then you should definitely take care of registering a TM in the EU. To make this process as hassle-free as possible, you should come up with a set of effective strategies enabling you to effectively protect a European TM & ensure smooth running of your business. 

It’s a quite common situation when the scale & scope of TM registration in the EU are expanded. On the one hand, that may significantly increase the cost of renewal, and on the other, it provides one with ample opportunity for business development.

Use & Regulation of TMs in the EU

If you’re planning to register a TM in the EU, you should keep in mind the recent changes in EUTM rules & regulations. Pursuant to them, TMs registered prior to June 2014 must be treated in accordance with the EUIPO Convergence Program. If, for example, duplicate TMs are detected, registration for one of them will be canceled following an extensive analysis of the seniority statements submitted by the TMs’ owners.

Coming up with effective TM protection strategies in Europe requires putting in place effective verification mechanisms. Having such mechanisms in place ensures that they remain up-to-date in terms of:

• relevance & appropriateness of TM use;
• updates to TM legislation; 
• changes to TM practices.

After analyzing their EUTM portfolio, EUTM owners should answer the following questions:

• Are their TMs valid?
• Are their TMs being used in the key markets & territories?
• Are specific products/services still covered in the description used when registering a  EUTM?
• Are they taking advantage of additional options for registration of non-traditional TMs in Europe?

Also, it’s worth taking care of registering a trademark in Great Britain by the end of the transition period preceding Brexit.