Frequently Asked Auestions About The Trademark Protection in Europe?

September 2020

A. How can you protect trademarks in Europe?

You can file European Union Trade Mark applications at the European Union Intellectual Property Office (“EUIPO“).
A European Union Trade Mark grants you exclusive rights in all current and future Member States of the European Union through a single registration, filed online. It is valid for 10 years and can be renewed indefinitely, 10 (ten) years at a time for each renewal.
You can start your applications from here.

B. Who can be proprietors of EU trademarks?

Any natural or legal person, including authorities established under public law, may be the proprietor of an EU trademark.

C. What can be an EU Trade Mark?

An EU trademark can consist of any signs, in particular words (including personal names), or designs, letters, numerals, colors, the shape of goods, or of the packaging of goods or sounds.
Your trademark should be distinctive: Consumers should be able to recognize 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 trademark should not describe what you sell: Your trademark should not monopolize 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.

D. Why could your trademark application be refused?

According to the European Union Trademark Regulation, there are two types of grounds for refusal: absolute grounds for refusal (Article 7) and relative grounds for refusal (Article 8).

E. How does the “right of priority” work for applications?

Trademarks are protected on a ‘first come, first-served basis.
Trademark protection begins when a legal filing date is given. However, when establishing who has filed first, it is not only the filing date of the potential competitor’s trademark that has to be taken into account but also any priority date.
Earlier trademark applications can enjoy a right of priority during a period of 6 (six) months from the date of filing of an EU trademark, and vice versa.
This can be requested from trademark applications filed at the national level, trademarks filed at a state party to the Paris Convention or a member of the TRIPS Agreement or at a state for which the Commission has confirmed reciprocity, or from an EU trademark application.
If you want to benefit from the right of priority, your EU trademark application needs to be filed within 6 months of filing your trademark at a national jurisdiction. If the priority for your national mark is accepted, your EU trademark application will be regarded as if it had been filed on the same day as the earlier application; that is to say, it will have priority over applications filed by others during that six-month period.
When filling in the trademark application form, you should complete the part relating to priority. The filing date for the first application will become the benchmark for determining who filed first.
You may find the example provided by EUIPO below:

F. What kinds of trademarks can you register?

There are 3 kinds of trademarks you can register: individual marks, certification marks and collective marks.
An individual mark distinguishes the goods and services of one particular company from those of another. However, this does not mean that an individual trademark has to be owned by a single person: individual trademarks can be owned by one or more legal or natural persons. This means that there are multiple applicants.
Collective marks distinguish the goods and services of a group of companies or members of an association from those of competitors. Collective marks can be used to build consumer confidence in the products or services offered under the collective mark. Very often they are used to identify products that share a certain characteristic. Only associations of manufacturers, producers, suppliers of services or traders, as well as legal persons governed by public law, may apply for collective marks.
Certification marks were introduced at EUIPO on 1 October 2017. They are a new type of trademark at the EU level, although they have already existed for many years in national systems. They are used to indicate that goods or services comply with the certification requirements of a certifying institution or organization; they are a sign of supervised quality. Any natural or legal person, including institutions, authorities, and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.

G. How can you check if trademarks or similar ones are already registered?

You can search for registered trademarks using two different databases:

eSearch plus is EUIPO’s access to its database of European Union trademarks and registered Community designs. It can help you find out if someone has registered a similar trademark with us. With eSearch plus, you can also perform image searches and image monitoring, find a representative or search the Bulletin.
The TMview database contains information from all of the EU national IP offices, the European Intellectual Property Office (EUIPO), and a number of international partner offices outside the EU on trademark applications and registered marks. A trademark applied for or registered at the national level before yours could pose a threat to your application.

H. What are the factors to take into account when analyzing the search results?

Timing: Please take the priority explanations made above into consideration while analyzing the search results.
Consumer Point of View: When comparing your trademark with earlier ones, you need to put yourself in the position of a typical consumer. What you have to ask yourself is: ‘Is a consumer likely to believe that my trademark already belongs to someone else?’ If the answer is ‘yes’, you might have a problem. By the way, don’t limit your search to identical trademarks. Signs similar to yours could also pose a threat.
Analogy: In the majority of cases, there must also be a link between the goods and services that you offer, and those applied for in the potentially conflicting mark. Here again, the goods and services that you provide do not need to be identical to those of the other party. Even if they are only similar, they could pose a threat.

(Checking these factors does not rule out risks but does minimize them.)

I. What should you do if you find that your mark or one like it has already been registered or applied for?

Below you may find the options listed by EUIPO:

Negotiate: Contact the owner of the earlier trademark to reach an agreement (many identical or similar trademarks coexist in the market).
Risk registration: Go ahead and file your application and risk opposition (the decision as to whether to object to an EU trademark application depends on many factors; the existence of an earlier registration does not prevent you from applying).
Challenge: Challenge the first trademark.
Give up: Go no further because the risk of opposition is too great.

J. What are the fees?

The basic application fee for an individual trademark starts at EUR 850 (electronic means).
The application fee for a collective mark is EUR 1 500 (electronic means).
The application fee for a certification mark is EUR 1 500 (electronic means).
You may find the list of other fees here.

Before you start the trademark registration process, you may use the checklist prepared by EUIPO.

Source:

Official Website of European Union Intellectual Property Office, https://euipo.europa.eu/ohimportal/en/trade-marks, Date: 25.09.2020