Startups are well aware that at the start of a business it is necessary to take care of trademark protection and register it. The trademark is protected territorially, that is, its protection extends only to the territory of those countries in which the registration procedure was passed. One of the advantages of registering TM in the EU countries is that its protection extends automatically to other countries within the EU. Therefore, if you plan to do business in one or several EU countries, then in this article you will find some useful tips on how to do this in the best way.
Benefits of Registering a Trademark in the EU
- Unitary and exclusive protection of TM.
- Unified procedure for registration of the trademark of the European Union in all countries.
- The trademark of the European Union through one registration will be protected immediately in all EU countries.
- Simplified formalities:
- a single application form;
- a single administrative center for registration;
- a single document confirming the right to TM.
- simplicity of the procedure for submitting documents.
- Cost reduction.
- No need for national registration.
- As a trademark of the European Community, a trademark may not be registered anywhere.
- Your company can register as many EU trademarks as it wants.
What exactly is worth registering?
In order to get the best protection using the trademark, during registration you need to consider how you will use the TM in the future. It is believed that the best protection is provided to its owner by a verbal trademark in two (or more) languages, and for each language variant a separate trademark is registered. If you have an original logo, then you need to think about protecting it. If it is possible to separate the figurative element and the verbal part separately, then for the protection it is better to register several trademarks in order to protect both the name and the pictorial part. If the trademark is used holistically, then you can register a combined trademark.
Each individual case must be considered individually, but you must understand that the more brand options you own, the more difficult it is to circumvent your protection
European Union trademark registration procedure:
A trademark application is filed with The Office for Harmonization in the Internal Market (OHIM) with headquarters in the Spanish city of Alicante. Therefore, the documents to register a single European trademark are often called the “Alicante Treaty”.
The application must contain information about the applicant, a list of goods and services, the claimed designation. The application is accompanied by the payment of the fee.
A formal examination is carried out with respect to the application. This means that the regulator only checks whether the applicant has the right to be the trademark owner and whether there are initial grounds for refusal. The applicant will receive a report on the search results afterward.
OHIM does not conduct an examination on the relative grounds for refusal (i.e. for the presence of earlier conflicting characters). The search results are sent to the applicant for informational purposes only. The European Office is not entitled to reject the application on the basis of identical or similar characters identified by this search.
If the examination results are positive, then information about the application is published in the official bulletin of European trademarks.
Search is not conducted in Benelux, Cyprus, France, Germany, Italy, Estonia, Latvia, Malta, and Slovenia.
Third Parties’ Opposition
If you intend to register a trademark in the EU, then you should know that third parties are entitled to object to the registration of the claimed trademark within three months from the date of publication. Third parties from any EU member state may appeal against a published application based on earlier national rights.
You’d better use it
If you plan to register a trademark in the European Union, you must be sure that you will use it in the next five years. The action of the European Single Trademark may be terminated and the costs incurred to register the mark may be meaningless if the trademark is not used. The owner of the Single European trademark must use his trademark for 5 years from the date of registration in at least one of the Community countries. Thus, the actual use of the Single European Trademark in at least one EU country will not allow you to cancel your registration.
You can register TM in the European Union and take full advantage of the European brand by contacting our seasoned law professionals from IQ Decision UK. We have experience in providing comprehensive legal support in resolving disputes regarding trademarks in the EU. Please fill out the form below to contact us directly.