How many applications should I file?
The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in the European Union.
If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).
In this case, proceeding with two trademark applications has the following advantages:
Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.
If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.
Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 6 months, if no objections or oppositions arise.
If I register my trademark in the European Union, do I have protection in other territories?
When you register your trademark the European Union, the territorial limit will be the member states of EU.
Do I need to sign a Power of Attorney?
Yes, a simple scanned power of attorney is required.
Are there any benefits from a pre-filing use of the trademark?
Yes. The applicant may benefit from using the mark prior to filing by:
- Acquiring distinctiveness of the mark
- Overcoming oppositions based on non-distinctiveness
- Being protected against infringement
Will there be problems in case I don’t use my trademark after registration?
Yes. Non-use is a ground for revocation of registration.
What are the types of trademark that can be registered in the European Union?
Registrable trademarks are those signs that can be interpreted in a graphical manner and can provide distinctiveness to the good or service that it represents. Examples are names, words, sounds, slogans, devices, colours, 3-dimensional shapes, motions, holograms and trade-dress.
What are the phases of application after a trademark has been filed in the European Union?
The application will first be examined by the trademark authorities with respect to formalities, classification, deceptiveness, clarity, descriptiveness and distinctiveness. If it passes the examination phase, the application details will be published online: the mark itself, applicant’s name and address, date of application, the goods/services involved, priority and seniority claim information, and the trademark’s representation. During the time of publication, opposition is also made available before the mark is officially registered.
What type of trademark is not registrable?
Applicants are not allowed to register the following:
- Marks that do not meet the standards of moral and contrary to public order
- Common and broad terms
- Names/flags/symbols of nation/states/international organization
- Marks that lack distinctiveness
Does European Union use the "Nice Classification" system?
Yes. Nice Classification is used in this jurisdiction. If the trademark is used in multiple classes of goods/services, only one application is necessary.
Does the Community Trademark apply for European Union?
Yes. Community Trademark takes effect in the European Union.
Is there any possibility to claim priority in the European Union?
Yes. The date where the application was first filed can be claimed as the filing date in the European Union if the applicant’s home country is a Paris Convention member. The same applies if the applicant’s home country is a World Trade Organization member.
What do I need to do to satisfy the use requirement?
You must use your trademark within 5 years from the date it was registered. It must be used for commerce and transaction must occur in any member states of EU.
Once my trademark has been registered, for how many years will be valid?
Once a trademark is officially registered, it will be initially valid for 10 years. The date of application will be the starting point.
What will be the renewal date of my trademark?
The first renewal must be made 10 years from the date when the application was filed.
Is it legal to use my trademark even if it is not yet registered?
It is legal to use your trademark for commerce and trade even if it’s not registered.
What is a Community trademark?
The European Union Intellectual Property Office (EUIPO), formerly named the Office for Harmonization in the Internal Market, administers the EU trademark(EUTM), called the Community Trade Mark (CTM) until March 2016. An EUTM is a pending or formal registration of a trademark recognized across the entire EU community rather than acknowledged country by country. The mark holder does not have to reside in a member country to apply for the EUTM.
The countries that support this community registration are in the European Union, namely; Austria, Bulgaria, Belgium, the Czech Republic, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the (soon to leave) United Kingdom.
CTMs, like their national counterparts, protect the property rights of their owners. Their administration and processing are less expensive than a national trademark for each member country and cover up to three trademark classes. Detailed requirements regarding a mark's graphical representation support emerging, latest technologies, and non-traditional markings like, for example, holograms.
Does having a registered trademark in the European Union give me any right?
Yes. You have to register your trademark in order to enjoy rights. The “the first to file” rule applies in the European Union.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
No. Applicants are not mandated to use the mark or to have intention to use the mark before registration.
What is the OHIM?
The term OHIM stands for "Office for Harmonization in the Internal Market", this term is no longer in use since 23 march, 2016. Today this office is called "European Union Intellectual Property Office" (EUIPO), this is the body in charge of registering Trademarks in the European Union.
What is the EUIPO?
The term "EUIPO" stands for “European Union Intellectual Property Office” it was founded in 1994, and is the body responsible for registering trademarks in the European Union.
Can a Trademark Application be opposed?
Yes. Grounds for opposition include:
- Propriety rights
- Corporate and establishment names
- Works of publication
- Domain names
- Violation of rights under Article 8, Article 6septies, and Article 6bis of the Paris Convention
- Marks that indicate geographical location
Who can contest my trademark registration?
Owners of a similar trademark which was registered earlier can oppose the registration. Licensees may also oppose the registration.
Is it possible to cancel a registration?
Yes. Registered trademarks are vulnerable to cancellation due to:
- Violation of propriety rights
- Descriptive marks
- Non-distinctive marks
- Misleading marks
- Functional marks
- Beach of copyright
- Violation of rights under Article 6bis, Article 6ter, Article 6septies, and Article 8 of the Paris Convention
- Geographical indication
- Violation of moral standards and public policy
- Registration in bad faith
Are there any rights established by having a registered trademark?
Yes. When you register your trademark, you are guaranteed to enjoy several rights namely:
- Exclusive right to use the mark
- Right to object to later conflicting registrations
- Right to demand an action to cancel later conflicting registrations
- Right to take legal action against infringing third parties and the right to obtain damages
- Right to issue license to third parties
- Right to request confiscation of counterfeit goods
How long is the opposition period?
Opposition period starts on the date the application was published or one month after the application was published by WIPO of an international organization. The opposition period will end three months after the opposition period has started.
Is European Union a member of the Madrid System?
Yes. European Union is a signatory of the Madrid Protocol.
Do I need to present periodic statement of use?
Consult us for information.
When should I renew my trademark?
Renew your trademark every 10 years.
What will be the renewal date of my trademark?
The first renewal must be made 10 years from the date when the application was filed.
Is there any documentation that should be presented when renewing a trademark?
No documentation is necessary.
If my trademark expires, do I have a grace period?
You have 6 months to renew a trademark that has already expired.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.