The European Union with its twenty-seven member countries, offers a diverse and large customer base for many businesses looking to expand abroad. If you intend to have a manufacturing base, distribution centre or sell goods or services within the EU, you will likely use your trade mark(s) there. As trade mark registrations are territorial in nature, they will not offer any protection abroad, so if you do not have the mark registered in a particular EU member state, your trade mark could be vulnerable to unauthorised use by a third party there.
In this article, our trade mark solicitors will discuss the different options for registering a trade mark in the European Union, the expected costs and timelines.
Contents:
- Who can register a trade mark in the European Union?
- What are the benefits of registering a trade mark in the European Union?
- How do I check if my trade mark is available for registration?
- What is the cost of trade mark registration in the European Union?
- How to register a trade mark in the European Union?
- How long does it take to register a trade mark in the European Union?
- What happens if my trade mark application is rejected?
- What are the requirements for maintaining a registered trade mark?
- Summary
Who can register a trade mark in the European Union?
Any individual or business can register a European Trade Mark at the European Union Intellectual Property Office (EUIPO). Although anyone can file an application, you can only deal with the EUIPO directly afterwards if you have a principal place of business or real and effective establishment or your domicile in the EEA. If not, then you will need to appoint a professional representative for all proceedings before the Office.
Where a business operates a group of several companies, you should consider which one will own the trade mark. This could depend on factors such as where each company is based, which companies will trade under the trade mark and whether you have a specific holding company set up to own the group’s intellectual property.
What are the benefits of registering a trade mark in the European Union?
There are many potential benefits to registering your trade mark in the EU, if you intend to trade there. A registered trade mark can be a valuable asset that can help you expand your business into new markets, perhaps by appointing distributors or licensing the use of your mark to local sellers who understand that market better. It can allow you to take legal action against third parties who start to use your mark or a similar mark for the same or similar goods and services.
There is no ‘use’ requirement for registration of a trade mark in the EU so you can apply for a registered trade mark even if you have not yet traded there. Some EU countries offer protection to prior unregistered trade marks so you will need to check whether anyone else is already using a similar mark in business in that country, even if you have been using your mark for a long time elsewhere.
How do I check if my trade mark is available for registration?
Trade mark clearance searches involve checks of the trade mark Register to ascertain whether there are any marks that are already on the Register that are the same as or too similar to your proposed mark, for the same or similar goods and/or services. These prior registered marks may present a barrier to your registration application as one or more such mark owners could decide to file an ‘opposition’ against your application.
It is possible to conduct searches of the national Registers of the individual EU member states. You may want to do this if you are registering one or more individual national trade marks or if you are registering an EU mark but have concerns about prior similar marks in particular countries.
You may also want to conduct unregistered trade mark searches to try to identify any identical or similar marks are already in use in business in a particular country, regardless of whether or not they are registered. This is more difficult and can involve checks of online databases, company registers, websites, domain name registers and social media sites. Our trade mark solicitors can help you conduct a trade mark clearance search in the EU.
What is the cost of trade mark registration in the European Union?
The cost of registering a trade mark in the European Union will vary according to the number of countries, the number of goods and services and the filing route which you decide upon. You will generally have the official Registry fee to pay for the application and the fees of the legal representative(s) that you use to prepare and file the application and communicate with the Registry on your behalf.
If you are filing in several different EU countries, it is likely to be cheaper to file your application centrally, via the EUIPO or the World Intellectual Property Office (WIPO).
The National Route: The Registry fee will vary according to the cost of the Registry office in question. For example, the French Registry charges €190 for an online application for one class of goods or services and an extra €40 for each additional class of goods or services.
You will also need to pay the fees of the professional representative that you use to prepare and/or file the application for you.
The EUIPO Route: The EUIPO Registry fee consists of the basic fee for filing online of €850 for one class of goods or services. For additional Classes of goods and services, the fee for the second class is €50 and the fee for three or more classes is €150 for each class. For a paper-based application, the basic application fee is €1000. If you decide to use trade mark representatives you will need to budget for legal fees.
The Madrid Protocol Route: The filing fee depends on whether the mark is a word or logo mark, the number of countries that you designate and the number of classes of goods and services in the application.
For an application based on a UK word mark, designating the European Union as a whole (via the EUIPO), in one class, the fee would consist of the basic fee of 653 Swiss francs and a designation fee of 789 Swiss francs. If the mark were a logo mark in colour, the basic fee would be 903 Swiss francs.
The ‘base’ registry Office may charge an administrative fee for receiving and processing your application and passing it on to the WIPO. For example, the UK IPO charged a £40 handling fee.
You will have professional representative fees to pay if you use a professional to prepare and/or file the application for you.
How to register a trade mark in the European Union?
There are three methods for filing an application in the whole or part of the EU, which operate in parallel to each other. The route that you choose will depend on factors such as the number of countries in which you want to register the mark, whether you already have the same mark registered somewhere else, whether you need to register the mark as quickly as possible and what your budget is. Language considerations may also play a part, for example, if you want to vary your mark in different countries to cater for different languages and so file via the national route or keep it the same everywhere you apply and file via the EUIPO or the WIPO.
The National Route: For this route, you need to apply directly at the national Registry office of the country(ies) in which you want to register the mark. So, if you want to register your mark in Spain and France, you would file two separate applications, one at each national office.
If you want to register your trade mark in Belgium, The Netherlands, and Luxembourg, you can file a single application to the Benelux Intellectual Property Office.
Your application will be examined and then published according to the law of the country in question and the time scales will vary according to that country’s procedure.
The EUIPO Route: If you want to protect your trade mark throughout the whole of Europe, it is cheaper and easier to apply for a European trade mark (EUTM) through the EU Intellectual Property Office (EUIPO). In this way, you can file a single application to cover all current members of the European Union.
You can complete your application in your language of choice out of the twenty-three official languages of the EU and choose a different second language for potential opposition or cancellation actions from the five working languages of the EUIPO, namely Spanish, English, French, Italian or German.
There is an easy filing option for non-complex applications for word or logo marks filed by single, small to medium-sized businesses that are based in the EEA and are applying directly themselves. Otherwise, you can use the ‘EUTM filing’ form for more complex types of marks, applications filed by professional representatives and applications claiming priority or other types of claims associated with the application.
Once your mark has been filed, it will be examined by an Examiner at the EUIPO to see if it meets the requirements of EU trade mark law and then, if it does it is published for opposition purposes for a period of three months before it is registered. During this three month period, the owner of a prior similar mark can file an opposition to the application on grounds including that the mark is too similar to theirs and likely to lead to confusion amongst consumers.
Priority Claims: Claiming ‘priority' means that if you have filed an identical application in another country that is a party to the Paris Convention within the last six months, you can apply for the same trade mark for the same goods and services or a smaller selection thereof in the EU and claim the date of filing of the earlier registration. This means that your application would have priority over any similar marks filed in the meantime.
Seniority Claims: Another perk of the EU system is the possibility to claim ‘seniority’. This means that when you have an earlier mark registered in an EU country and apply for an EU trade mark for the same mark and the same goods and services, you can surrender the earlier national mark or allow it to lapse and it will be deemed to continue under the EU mark. So, you will no longer need to pay renewal fees for the earlier national mark and can still benefit from its earlier filing date in that country.
The Madrid Protocol Route: The World Intellectual Property Office (WIPO) offers a system whereby owners of an existing trade mark registration or application in a country that is a party to the Madrid Protocol can use that registration or application as a ‘base’ for an international application for the same mark. You can select the number of countries that you want to apply for in the application, including selecting the whole of the European Union as a single ‘designation’.
You will need to be a national or have your domicile or a real and effective industrial or commercial establishment in the country in which you own the base registration or application. You can then file a single application at the WIPO via your national Registry office, in either English, French or Spanish. The form must be typed and you will need to specify who is to own the trade mark, provide a representation of the mark that is identical to the base mark and provide a translation of the mark into French, Spanish and Italian. The list of goods and services can be the same or narrower than that of the base mark. The fees are payable in Swiss francs and you can pay by bank transfer or current account if you have set one up at the WIPO.
For a Madrid application designating the EU, you will need to specify a second language which may be used in opposition and cancellation proceedings, which is one of the five official languages of the European Union.
Again, you can claim ‘priority’ if you have filed an earlier identical mark for the same goods and services in a Convention country less than six months before you filed the international application.
How long does it take to register a trade mark in the European Union?
The timings will vary depending on the route that you have taken to file your application.
The National Route: Timings will vary from country to country. In general, the Registry in question will examine the application first and issue an Examination Report and then the application will be published for a certain length of time to allow third parties to file an opposition to its registration if they perceive it to be a threat to their prior similar mark. If no oppositions are filed, the mark will proceed to registration. Any issues arising in the Examination Report or oppositions will normally be dealt with via your appointed representative in the country in question. So, you may have two separate legal representatives involved - one in your own country who is advising you and handling your case and another foreign attorney that they are liaising with in the country(ies) applied for.
EUIPO Route: An EU application generally takes around six to nine months from filing to registration, if no issues arise that need to be resolved.
If the Examiner raises an issue in the Examination report, you will normally be given four months in which to respond. The opposition period is three months for an EU application, but this cannot be extended and there is no procedure for filing a threatened opposition as there is in the UK. If an opposition is filed, the process can take up to a year or more before there is a decision. Once an opposition is filed and has been deemed admissible, the parties have a two month ‘cooling off period’ in which they can try to negotiate a settlement. This period can be extended once by twenty-two months for a maximum of up to twenty-four months. Then the adversarial round will begin and each party is given two months’ to submit their evidence and observations and these ‘evidence’ rounds can be repeated if necessary. A decision will then be made by the EUIPO and communicated to the parties and either party can file an appeal within two months’ of the decision.
Madrid Protocol Route: Madrid Protocol applications can take longer than national or EU applications as there are some additional steps involved in the process. Your application will be filed via the Registry office of your ‘base’ application or registration. This office will then check that the mark applied for corresponds to the ‘base’ mark and certify the application and then send it to the WIPO. The WIPO will then conduct its own checks as to whether the application meets the formal requirements and issue an irregularity notice to the base national office, if it does not. You will normally have around three months to reply to an irregularity notice. If the deficiency is remedied, then the WIPO will register the international mark and publish it in the WIPO Gazette of International Marks. This does not mean that the mark is registered yet in any of the countries that you have applied for.
The next step is for the WIPO to send the application to each national Registry which will then conduct its own examination of the application. The national offices must issue an examination report within twelve, or sometimes eighteen months from the date of receiving the application. After this period, you will receive a notice of ‘Grant of Protection’ or ‘Provisional Refusal’ of the application from each country applied for, via the WIPO. You can reply to a ‘Provisional Refusal’ via a local representative or directly to the WIPO, depending on the grounds for the refusal. If you are then successful, the application will proceed to registration. If you are not successful in overcoming the refusal, a notice of ‘Total Provisional Refusal’ will be issued, which you may be able to appeal against. If the provisional refusal contained a notice of an opposition, it may take many months to resolve the opposition. For Madrid Protocol applications the cooling off period cannot be extended beyond four months since a Statement of Opposition against a Protocol application must be filed no more than four months after the end of the advertisement period.
What happens if my trade mark application is rejected?
If a national trade mark application is rejected and you cannot overcome the rejection, you will lose the application and the application fee. You would have to file a new application for an amended mark or for a different range of goods and services, that is more likely to be accepted.
If an EUIPO mark is deemed not to satisfy the legal requirements in any part of the EU or if an opposition is successful based on a prior similar mark in any country of the EU, the EU application will fail. You can apply to have it ‘converted’ into separate national applications in countries where there are no obstacles to its registration. This process entails further fees payable to the individual Registries of the countries concerned as well as a ‘conversion’ fee of €200.
If a Madrid Protocol application is rejected in a particular country, it will not necessarily fail in the other countries applied for. For example, your mark could be refused on grounds of being purely descriptive in a particular language but could be perfectly distinctive in a different language. This is an advantage over an EU trade mark which can fail if it is found to be purely descriptive or misleading or otherwise fails to satisfy the legal requirements even in one member state.
One possible disadvantage of the Madrid Protocol route is that if your ‘base’ application or registration is challenged and ceases to be registered in full or in part within the first five years’ of the international registration, then the international registration will fail to the same extent, in all countries designated. This is called a ‘central attack’. This means that it is important to choose a strong trade mark as your ‘base’; one that is unlikely to be challenged and to ensure that you renew the ‘base’ mark if necessary during this five year period and use the base mark in business if it is over five years’ old so that it is not vulnerable to revocation on grounds of non-use.
If the Madrid application does fail as a result of central attack, you can apply to have it ‘transformed’ into separate national applications within three months’ of the date of cancellation of the international registration. The national application will then keep the priority date of the original Madrid application. This can be an expensive process as you may need to pay a transformation fee to the national Registry office concerned.
What are the requirements for maintaining a registered trade mark?
Continued use of the mark: You do not have to be using your mark or declare a bona fide intention to use your mark in order to apply for an EU trade mark. It is recommended that you use your registered mark within five years’ of its registration and in every five year period thereafter for the goods and services that the registration covers, within a “substantial part” of the EU. If you do not use the mark within this time period then a third party could challenge your registration and try to have it revoked on grounds of non-use. In opposition or other proceedings before the Registry, you will not be able to rely on your prior registered mark unless you can provide the necessary ‘use’ evidence. The use must be ‘genuine use’, which will be determined according to factors such as the size and characteristics of the market, the nature of the goods and services concerned, the scale of the use and its frequency and regularity.
Renewal of the mark: An EU trade mark or EU designation of an international mark must be renewed every ten years in order to remain registered. You can renew your mark online by filing the renewal form and paying the basic fee of €850 for one class of goods or services. You can also renew a mark in the post for a basic fee of €1,000. If you miss the renewal deadline there is a grace period of six months during which you can file a late renewal request and pay a surcharge of 25 % of the late renewal fee, up to a maximum of €1,500.
Keep your details up to date with the Registry: It is important to ensure that you notify the relevant Registry of any changes to the mark owner’s name, address and contact details by filing the requisite form. The Registry may not be able to contact you if there is a challenge to your registration or your mark is about to expire and you may lose the opportunity to maintain your registration. If your mark is registered via the WIPO, you can notify the WIPO of any changes and it will then transmit this information to the separate national Registries.
Summary
There are various ways to register a trade mark in the European Union, each of which may offer additional benefits or risks, according to your situation. You should seek legal advice from one of our trade mark solicitors, particularly as you may not be familiar with the language and legal requirements of a particular country. The EU as a whole has around 448.4 million inhabitants and if it were a country it would be the third largest in the world, so protecting and exploiting your intellectual property rights there could be the start of a lucrative expansion strategy for your business.
