Registering a trademark in Europe.
By: Christophoros Christophi
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Registering a trademark in Europe.
Trademarks are a symbol of the identity of your business. The original names, phrases, symbols, logos, and designs that you create for your business help to identify your products and services. Consumers will be able to distinguish your offerings from that of competing businesses largely thanks to memorable trademarks.
This article relates to the procedure of registering an EU Trademark.
At the European Union Intellectual Property EUIPO (EUIPO) can be registered the following marks:
· Word mark
· Figurative mark
· Figurative mark containing word elements
· Shape mark
· Shape mark containing mark
· Position mark
· Pattern mark
· Colour (single) mark
· Colour (combination) mark
· Sound mark
· Motion mark
· Multimedia mark
· Hologram mark
Benefits of registering a European Union trade mark.
1. It is a single registration — filed online, in one language and it is valid in all EU Member States.
2. The EU trade mark gives its owner an exclusive right in all current and future EU Member States at a reasonable cost.
3. You can enforce your trade mark in a market of almost 500 million consumers.
4. An EU trade mark is valid for 10 years. It can be renewed indefinitely, 10 years at a time for each renewal.
The national registration is complementary one. However, national level trade marks and regional trade marks are necessary for users who do not want or need protection of their trade marks at EU level.
Is your trademark eligible for registration?
To be eligible for registration, your trade mark must be distinctive and must not describe what you sell.
Your trade mark should be distinctive.
Consumers should be able to recognise 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.
Your trade mark should not describe what you sell.
Your trade mark should not monopolise a sign that merely describes the goods and/or services that you offer. Such signs should remain available for everybody: for you and your competitors.
EUIPO will refuse your trade mark application if it is believed not to fulfil these and certain other requirements. also called absolute grounds.
Absolute grounds for refusal.
· Non-distinctive trade marks
· Descriptive trade marks
· Customary signs or indications
· Shapes or Other Characteristics that Result from the Nature of the Goods, are Necessary to Obtain a Technical Result or give Substantial Value to the Goods (Article 7(1)(e) EUTMR)
· Trade marks contrary to public policy or acceptable principles of morality
· Deceptive trade marks
· Trade Marks in conflict with flags and other symbols
· Trade Marks in Conflict with Geographical indications
· Trade marks in conflict with traditional terms for wines
· Trade marks in conflict with traditional specialities guaranteed
· Trade marks in conflict with earlier plant variety denominations
· Acquired distinctiveness through use
Once the EUTM application has been filed, a provisional filing date is accorded, and the EUIPO issues a receipt. At this early stage, the EUIPO only checks whether certain filing date requirements of the European Union trade mark regulation (EUTMR)have been fulfilled. The filing date will only become definitive when the application fee has been paid.
The applicant should check the receipt carefully and notify the EUIPO of any incorrect data. The applicant can only correct data that have an impact on the filing date, such as the applicant’s name, the representation of the mark and the list of goods and services, if it notifies the EUIPO on the same date as the incorrect data were submitted. After this date, any amendment is subject to the provisions of the EUTMR, Implementing Regulation (EUTMIR) and Delegated Regulation (EUTMDR), inparticular, Articles 20 and 49 EUTMR.
After the receipt has been issued, the EUIPO carries out a language check of the verbal elements of the mark in all the official languages of the EU and prepares a European Union search report. This report will be sent to the applicant only if it was expressly requested when the application was filed.
Payment of the application fee and national search fee (if applicable) is validated 1 month at the latest after the EUTM application has been filed. If the applicant has applied for a national search and paid the relevant fee, the EUIPO forwards the application to the EUIPOs of the Member States that perform national searches.
During the examination proceedings, the EUIPO examines the following:
· filing date,
· priorityand/or seniority where applicable,
· the regulations governing use of the mark for collective and certification marks, and
· absolute grounds for refusal.
All these examination steps can be carried out in parallel as there is no strict sequence in examination proceedings.
The applicant will be notified of any deficiency and given 2 months to remedy it and/or submit observations. Any decision partially or wholly refusing an EUTM application must give the ground(s) on which the EUTM application has been refused and in form the applicant of the right to appeal.
Applications that comply with the requirements of the regulation are accepted for publication and sent for translation in to all the official languages of the EU.
The last step in the examination procedure is the publication of the application in Part A of the European Union Trade Marks Bulletin (EUTM Bulletin).
The trademark will then be entered in the relevant Class according to the Nice Classification.
Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. It is updated every five years and its of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 embrace services), and allows users seeking to trademark a good or service to choose from these classes as appropriate. Since the system is recognized in numerous countries, this makes applying for trademarks internationally a more streamlined process.
The goods and services the applicant seeks protection for are reviewed to see if they have been correctly classified and their nature has been clearly indicated. If the applicant have used the Harmonised Database for classification, then its list of goods and/or services will be accepted automatically.
Anyone can access the Harmonised Database using TMclass. TMclass is an international database that includes the terms of the Harmonised Database, as well as terms accepted in other countries around the world and by international organisations such as the World Intellectual Property Organization.
Publication takes place if the application fulfils all the acceptance conditions.
Applications are published in all the official EU languages.
The examiner must ensure that the following details are available, where applicable:
a. application file number;
b. filing date;
c. representation of the trade mark;
d. indication of the collective mark or certification mark;
e. indication of the mark type other than word marks, for example figurative marks, shape marks, position marks, pattern marks,hologram marks, sound marks, colour marks, motion marks, multimedia marks and other marks;
f. description of the mark;
g. colour code(s);
h. figurative elements under the Vienna Classification;
i. acquisition of distinctive character through use;
j. applicant’s name and address;
k. representative’s name and address;
l. first and second language;
m. goods and services under the Nice Classification;
n. priority data as filed;
o. exhibition priority data as filed;
p. seniority data as filed;
q. transformation data.
Once the examiner has checked that all these elements are correct and the EUIPO has received the translation in all the official EU languages, the application will be published.
What happens during the opposition period?
From the date of publication onwards, third parties who believe your trade mark should not be registered have three months to object.
There are usually two motives for objecting:
1. Earlier right.
The third party has an earlier right (or more than one) and believes that yours will, if registered, conflict with it
In order to prevent your mark from being registered, they must oppose your trade mark by filling in a form and paying a fee of €320. If an opposition is filed, your mark will be subjected to — and must succeed in — opposition proceedings. An opposition can be filed within three months after a trade mark has been published.
The opposition procedure:
One in five applications for EU trade marks are opposed by the owners of trade marks that are already on the market. EUIPO decides on these disputes after both parties, the applicant and the opponent, have submitted evidence and arguments. The applicant can minimise the risk of opposition by searching for potential conflicts before they apply.
The timeline begins with the publication of the application and ends with the publication of the registered mark and is composed of the following steps:
· ‘filing of an opposition’,
· ‘admissibility check’: if the Notice of Opposition meets the formal requirements set out in the Regulation, i.e. whether it is acceptable.
· ‘the cooling-off period’: If the notice of opposition is accepted, a notification is sent to both parties setting time limits for the proceedings. The proceedings start with a period during which parties can negotiate an agreement; this is called the ‘cooling-off’ period. During this period the parties are given the option of terminating the proceedings. The cooling-off period expires two months after the notification of admissibility. It can be extended for 22 months and can last for a total of 24 months. Either party can opt-out of the extension at any time. Once the cooling-off period has expired, the adversarial part of the proceedings begins
· ‘the adversarial part of the proceedings’, At this point, the parties involved are invited to send additional information and evidence to support their positions. The EUIPO first gives the opponent two months to complete their file. The opponent may include any facts, arguments and evidence that they consider necessary to support the opposition.
Then the EUIPO gives the applicant two months to reply. Finally, the opponent is given the opportunity to comment on the observations submitted by the applicant
· ‘the end of the proceedings’.
All opposition decisions are published online and all adversely affected parties have a right to appeal.
Where an opposition has been successful, it is still possible to convert your EU trade mark into national registrations, provided no conflicts exist.
2. The third party considers that your trade mark should not have been accepted.
They can invoke any ‘absolute ground’ that they see fit. Absolute grounds are requirements that your trade mark needs to satisfy like being distinctive, non-descriptive of the business you are in and clearly represented. To oppose your trade mark, they should send a corresponding communication to the EUIPO explaining why they believe the trade mark should not be registered. This is called a ‘third party observation’ and it is free of charge. However, it should only be used when a serious reason for contesting the trade mark exists.
Once the observations are received, the EUIPO will issue a receipt to the person making the observations (the ‘observer’), and the observations will be communicated to the applicant. Thereafter, the observer will not receive any further communication from EUIPO. In particular, the observer will not be informed about the outcome of any re-examination of the application. However, observers wishing to be informed of the further fate of the EU trade mark application concerned will be able to access information about its status via eSearch.
How to challenge an EUIPO decision.
Parties adversely affected by a final decision can file an appeal. The eAppeal tool offers one single application for filing a Notice of Appeal electronically.
Proof of registration.
If nobody files an opposition or third party observations, 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 trade mark is yours.
The publication of the registration is free of charge and a certificate of registration is issued.
You are invited to download the certificate two days after publication. No paper copy of the certificate of registration will be issued. However, certified or uncertified copies of the registration certificate may be requested. This may be necessary if you want to claim the priority of your EU trade mark.
Apply for a trademark in Europe. (EUIPO trade mark application)
The basic fee is due within one month from the date the application is received by EUIPO. Please note that we only examine trade mark applications and process any mail related to them after they are paid for.
· The basic fee covers one class for EUR 850.
· The fee for the second class of goods and services is EUR 50.
· The fee for three or more classes is EUR 150 for each class.
If you are interested in the registration of an EU Trademark send us an email by clicking here.