How to register a trademark in the EU

Sergiy Barbashyn Attorney at law, managing partner Barbashyn Law Firm
22 November, 2023 8 min for reading
22 November, 2023 8 min for reading

Registration of a trademark in the European Union gives its owner some rights, including the right to use the TM at his discretion, the exclusive right to prohibit its use by others, and the right to claim compensation for damages caused by the use of the TM. This article will consider the advantages and central aspects of trademark registration in the EU.

Advantages and disadvantages of TM registration in the EU

The presence of a European trademark provides such advantages that will be necessary for a company seeking to succeed in the EU market. Let’s consider the main ones:

1. “Principle of unity”

🔹 The TM applies to all EU member states, including those that may join after TM registration. This means that by registering a TM, you have exclusive rights to use your mark and can prevent illegal use and copying in any of the 27 member states of the Union.

2. Centralized application submission.

🔹 TM registration takes place by submitting a single application to the EU Intellectual Property Office (EUIPO), which significantly speeds up the registration process, as there is no need to submit separate applications to each EU member state. Applying to one general office avoids the complications associated with each country’s standard registration procedures.

3. Reduction of registration costs.

🔹 Reducing registration costs is one of the key benefits of registering a TM through EUIPO. TM registration saves time and money compared to national registrations in each EU member state. The registration fee is calculated by the number of classes of goods and services for which the TM is registered and is less than the sum of individual registration fees in each EU member state.

Therefore, the EUIPO (European Intellectual Property Agency) application reduces registration costs, simplifies the procedure, and saves time and effort for brands wishing to expand their EU presence.

The disadvantage of TM registration is that if your application for registration is rejected in one of the EU member states, it will automatically be rejected in all other EU countries.

This is related to the principle of unity. This rule also applies when the TM is recognized as invalid or when the validity period of the registration is terminated due to non-use of the TM.

However, it is essential to consider that a professionally prepared and substantiated application, in most cases, has a high chance of successful registration.

Who can register a trademark

TM registration is possible for all individuals and legal entities, regardless of their citizenship or place of registration. This means that individuals and companies from other countries have the opportunity to apply for registration and obtain protection of their TM in the EU.

However, the interests of non-EU applicants must be represented before the EUIPO by lawyers or patent attorneys registered in the EU.

Advantages and disadvantages of TM registration in the EU.

Registration process and terms

As mentioned, TM registration takes place by applying the EUIPO. On average, registering a TM in the EU takes 5-8 months from the moment of application, but it can take longer, depending on individual circumstances.

The application is submitted in one of the official languages of the EU and must contain:

🔹 information about the applicant;

🔹 a list of goods and services for which TM is registered;

🔹 declared designation.

EUIPO conducts only a formal examination of the application, which checks the absence of absolute grounds for refusal of registration. For example, the fundamental basis is the descriptiveness of the TM for the declared goods and services. This can be FreshBlend for the production and sale of juices and smoothies. The application will be published in the EUIPO Official Bulletin if it has successfully passed the formal examination. During the next three months, any interested person can submit an objection to the registration of the claimed TM to the relevant department. If no objections are received, or the results of consideration of the raised objections are favorable for the applicant, a decision is made to register the TM.

Registration fee

The cost of applying for registration depends on the number of classes of goods or services for which the TM is registered.

The registration fee is 850 euros for one 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.

In addition to the basic costs, additional costs may arise during the registration process. These could be costs for correcting the application, responding to requests from the official agency, or costs for the objection procedure if such objections were filed against TM registration.

In addition, this year, European and Ukrainian small and medium-sized enterprises have a unique opportunity to 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, it is worth noting that the SME Fund 2023 Ideas Powered for the Business program has a limited duration from 23 January 2023 to 8 December 2023 and a limited budget.

Term of validity of legal protection of a trademark

The EU TM registration is valid for 10 years from the date of application. After the end of this period, the owner of the TM can extend the registration for the following 10-year periods. Therefore, a TM can be registered indefinitely as long as the owner continues to register their TM on time and by EUIPO rules and requirements.

Registration of a trademark in the EU according to the Madrid system

In addition to the registration procedure through EUIPO, one of the popular registration procedures is registration through WIPO under the Madrid system.

TM registration through WIPO is a profitable alternative in case of the need for TM registration in the EU and other countries. In addition, the Madrid system can be applied in the event of the extension of the national TM to many territories. This allows for a reduction of both registration costs and time compared to separate submissions in each country.

However, an essential requirement for TM registration under the Madrid system is the presence of a primary TM or an application for a TM in one of the member countries of the Madrid Agreement. This condition also causes a particular disadvantage to the system. Yes, the international application is tied to the national registration, and in case of refusal to register the primary application, the international application is also canceled.

The cost of international TM registration varies depending on the number of classes of goods and services according to the international classification, whether the TM is applied in color or in black and white, and the countries in which protection is used and their number.

Why should you register a trademark in the EU?

TM registration in the European Union has many advantages, making it attractive for companies and brands seeking to succeed in the European market.

Among the critical advantages of filing a single application for registration with the EUIPO is single and exclusive protection throughout the EU, ensuring long-term security and cost-effectiveness, as registering a TM is lower than writing national TMs in each EU country.

A TM in the EU can also be registered under the Madrid system. Its use is a profitable alternative in case of need for registration in the EU and several other countries. Still, it requires the presence of a primary TM or an application in one of the member countries of the Madrid Agreement.

Therefore, the choice between these procedures requires careful evaluation and depends on the applicant’s specific needs.

Posted by Mc.Today

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