“How do I successfully apply for an EU trade mark?"
A European Union Trade Mark registration at the European Intellectual Property Office (EUIPO) gives you protection from unauthorised use of the trade mark in every member state of the EU. National courts and other authorities treat a European Trade Mark as equivalent to a national trade mark.
However, the cost of registering a European Union Trade Mark is a fraction of the cost of securing more than 20 national trade marks for all EU member countries. Applicants applying for a EU Trade Mark must make a number of important choices and these can affect both the chances of the application being successful and the value of the protection once secured.
Choosing your trade mark carefully
Business owners, brand managers, and marketing professionals spend time, effort, and expertise choosing trade marks for their products and services. It is natural for business owners to choose trade marks that convey as much information about their products and services as possible. But a trade mark that only describes the goods or services offered will be refused registration. A trade mark must have "distinctive character" in order to be registered. Invented words will always have distinctive character, but real words may be too descriptive of the goods or services to be registered.
Often marketing professionals seek legal advice on the registrability of trade marks very late in the brand development process or only after a trade mark application has run into difficulty. By then, resources may have been committed to a trade mark that cannot be protected from copycats.
Who is the owner of your trade mark?
A trade mark is a piece of property. It can be bought and sold like any other property. The trade mark register maintained by the EUIPO keeps track of who owns the property right in each trade mark. It is important that the register is accurate. Only the owner has the right to sell the property or to object to the registration of other similarly confusing trade marks. Before you register a trade mark you must be clear on whether it will be owned by you personally or by your company.
Where a business operates a group of several companies, you must carefully consider which business will own the trade mark. The registered owner of the property must be the kind of entity that is actually capable of owning property. This varies from country to country. Your friendly sports team or club, for example, might not be capable of owning property.
Securing a priority date for your EU Trade Mark applications
If you have applied for a national trade mark registration, you may be able to use the date of that application as the priority date for your EU Trade Mark application. The EUIPO operates on a first-come-first-serve basis, but a priority claim allows the date of your earlier application to apply to your EUTM Application. Securing an earlier priority date can be important if there is an application similar to yours around the same time. It also provides useful protection against trade mark trolls who might see your trade mark application in one country, and apply for the trade mark at the EUIPO in the hope of disrupting your trade mark strategy or extorting money from you to surrender it. The priority date claimed must not be more than six month prior to the date of application.
Which type of trade mark can I register?
There are many types of trade mark. Although words, logos, and combinations of the two make up the vast majority of trade marks, in principle, anything can be a trade mark provided that it has the capacity to distinguish the goods or services of one business from those of another. The EUIPO makes specific provision for shape marks, colours, pattern marks, and motion marks. Product packaging may be registered as a trade mark. Even the colour of the goods may be eligible for registration as a trade mark. However, the law on these non-traditional trade marks is more complex than that for words and logos and applications for non-traditional trade marks typically benefit from expert advice.
Registering trade marks for goods and services
A trade mark application must be filed with specific goods or services in mind. Once registered, your trade mark gives you the exclusive right to use the trade mark for those goods and services listed. Other businesses may be free to use your trade mark for entirely different goods and services. It is important to register the trade mark, not only for the goods and services that you currently offer, but also those that you might offer in the near future. You should specify the goods and services in a way that provides the best protection.
A trade mark that is registered for fruit provides more protection than the same one registered for apples, because it can prevent the sale of all fruit under the trade mark. The same trade mark registered for apples alone might allow a competitor to use the trade mark for oranges. A classification system for goods & services, known as the Nice Classification, assigns one of 45 possible class numbers to each of the goods & services listed in the application. Apples and oranges are both in Class 31, for example, but orange juice is in Class 32. The trade mark application must provide the correct class number for each of the goods and services listed in the application. If the incorrect number is used in the application, it may be rejected.
EU Trade Mark application and registration fees
A fee of EUR 850 is charged by the EUIPO for each trade mark application. If the application is rejected for some reason the fee is not refunded. This fee includes only one class of goods or services. Each additional class incurs an additional fee. A second class requires an additional fee of EUR 50. But the third and each subsequent class incurs a fee of EUR 150. For example, an application for a trade mark with goods in services in nine classes costs EUR 1950. If the application is successful, the registration is valid for ten years and no further fees will be payable until the trade mark is renewed at the end of that period.
How we can help you register a EU Trade Mark
Our team of experienced trade mark solicitors will file trade marks in Europe on your behalf, using our experience to avoid common pitfalls, giving you the best chance of success.
Our trade mark solicitors are with you every step of the process. We take the time to truly understand your business and its requirements and provide practical guidance and advice on how to approach the trade mark registration process.
We are also experienced in helping clients manage their trade marks after they have successfully been registered. Our post registration services include trade mark licensing and exploitation, trade mark monitoring, litigation and renewals.
If you would like to register a national or EU Trade Mark, please contact our team of experienced trade mark solicitors.