Nuances and recommendations for registration trademark in the EU

Barbashyn Law Team Roman Tkan - Lawyer at Barbashyn Law Firm, Anastasia Vladieva - junior lawyer at Barbashyn Law Firm
7 December, 2023 6 min for reading
7 December, 2023 6 min for reading

A registered trademark in the EU is desirable for many entrepreneurs who operate in the territory of the Union or plan to operate there. TM allows one to distinguish goods and services from those of other persons. The presence of a registered TM enables its owner to legally prohibit others from using their brand and claim damages for infringement.

 

This article will consider the nuances of TM registration in the EU and recommendations for applicants.

Features of registration

Any individual or company can apply. There are two ways to use the EU:

  1. Non-EU applicants can apply directly to the European Office through lawyers or an EU patent attorney.
  2. By expanding the scope, it is based on a national (primary) application through the World Intellectual Property Organization (WIPO). For example, such an application can be submitted for TM registration in Ukraine. In this case, involving a lawyer or a patent attorney from the EU is unnecessary.

To prepare and submit an application, you must provide a list of classes and the applicant’s contact information in English:

– first and last name or title of the applicant;

– the address of the place of residence/registration of an individual or the location of a company.

The cost of applying directly with the EUIPO includes the official filing fee in addition to the representative’s fee. The fee depends on the number of classes: EUR 850 is paid for 1 class. If the application covers two classes, an additional fee of EUR 50 is payable. For each subsequent class after the second, the additional fee is 150 euros.

If you apply WIPO based on a Ukrainian application, the following is payable:

– a fee for an international application to the intellectual property body of Ukraine for UAH 2,400 (~60 euros);

– the WIPO fee, which depends on the number of classes, whether a color or black-and-white logo is submitted, and the territories to which the TM will be extended (the basic WIPO fee for the EU is 653 Swiss francs);

– remuneration of the representative.

However, additional costs may sometimes arise during the registration process. An example could be the costs of responding to EUIPO or WIPO requests to correct an application or reply to opposition. We will talk about these processes in more detail later.

After the TM application has been submitted and the fees have been paid, the EUIPO checks the submitted application materials for compliance with the requirements of the law and whether there are grounds for refusal of registration. If there are inaccuracies in the application or incomplete data, the Office notifies the applicant. In case of failure to provide the required data or answer the request, the registration may be refused. Next, the application is published in the official bulletin of the Department so that other persons can read it and file an objection against the registration within 3 months. If a complaint is received, the person must prove the uniqueness of his designation and the practicality of registration. The application may only be accepted if the decision favors the applicant.

The registration period takes an average of 5-8 months. If there are obstacles to registration, such as additional requests from the Office or objections of other persons, the registration period may last longer.

The Department issues a TM registration certificate only in electronic format.

The TM will apply to all EU member states, including those that may join after TM registration.

Registration is valid for 10 years from the date of application. After the end of this period, the certificate can be extended for another 10 years with no restrictions on the number of times.

Recommendations

Before applying, you must conduct a preliminary search because the EU market is oversaturated. Whatever unique designation is planned for filing, there is a high probability of finding a similar TM on the territory of the EU, the owner of which may object to your registration. If registration is refused in one of the EU member states, the decision to ban will be automatically adopted in all other EU countries.

Choose one application option – directly to the European Office or through the Madrid system based on the Ukrainian application. There is no need to submit two applications. If an application is required in 2 or 3 EU member states, obtaining registration through the European Office will be cheaper and faster than submitting multiple applications to national offices. It is worth raising a separate application to the EU if commercial activity is conducted only on the territory of EU countries and there are no plans to expand the territory of activity. Another advantage of applying directly to the European Agency is the possibility of receiving a refund of the application fee (grant).

European and Ukrainian small and medium-sized enterprises receive a 75% discount on TM registration in the EU. This allows you to save 637 euros when submitting one application. The benefits were introduced thanks to the EUIPO initiative called “SME Fund 2023 Ideas Powered for Business”. This program aims to assist small and medium-sized enterprises protect their intellectual property rights.

However, the SME Fund 2023 Ideas Powered for Business program has a limited duration from 23 January 2023 to 8 December 2023 and a limited budget.

Submitting an international application through the Madrid system based on the European application is possible. Such a registration option may occur if you have received a refusal to register a Ukrainian application or an objection to registration if there is no basic application in Ukraine and it is irrelevant. Another advantage of this application method is the simple and inexpensive expansion of the territory of the European TM since it is not necessary to submit separate applications to other countries.

The list of goods and services must be submitted in English. It would help if you did not translate them yourself because you will receive additional requests from the Office to clarify the list, which may lead to other costs. It is necessary to select ready positions from the International Classification of Goods and Services (Nice Classification) and indicate them alphabetically.

An objection from the owners of other TMs against your TM does not mean a final refusal of registration. Evidence of long-term use of the brand in the EU significantly increases the chances of obtaining a decision on registration. Therefore, we do not recommend applying for registration of a designation that was invented very recently and has yet to be used in economic activity.

Conclusion

Trademark registration in the European Union has nuances, namely a limited 3-month opposition period, a relatively simple and fast registration process, issuance of only an electronic certificate, the possibility of receiving a fee refund, etc.

Applying the international Madrid system is characterized by a higher cost of fees and the need for a basic application, conversely, there is an opportunity to expand the TM to other territories.

We have extensive experience in TM registration in the EU. We can consider all the features to obtain a favorable decision in the shortest possible time.

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