Trade Mark
Walkthrough
Strategy
European Union trade mark protection gives you great potential to build and defend your brand, and access to many of the possibilities that intellectual property can offer. However, you have to realise this potential: the more you put in, the more you get out.
The strategy you adopt for your trade mark will be unique to you. It will reflect your company's wider interests and its intellectual property portfolio. In pursuing these interests, you should consider three issues in particular:
Using your trade mark
As already mentioned, there are no rights without obligations. The right that has been granted to you is a powerful tool that can be used to help you build brand recognition in the market. However, the monopoly you hold should serve a purpose or it may be removed. The purpose of your trade mark is to distinguish your goods and/or services from those of your competitors in the market. Therefore, your trade mark must be put to use. If you don't use it, third parties can challenge your trade mark for non-use. The law establishes that an EU trade mark must be put to genuine use in the European Union in the five years following its registration.
Your trade mark could also be cancelled if, because of the use you make of it, it becomes the common name for a good or service, or if it becomes misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.
Defending your trade mark
The fact that you own a trade mark does not mean that third parties will stop challenging it. In fact, third parties who have failed to observe the time limits for filing observations or an opposition are given a second chance in which they can try to obtain the cancellation of your right.
You may think this is a bit unfair, but if the tables were turned, you might see it differently: imagine you had failed to observe the time limit for filing an opposition against one of your competitors' trade marks.
The filing of a cancellation action triggers the start of a procedure in which an exchange of arguments between the parties involved takes place. Eventually, if no agreement is reached, we will make a decision.
A request for cancellation costs €630. There are two different forms you can use: the declaration of invalidity form and the revocation form. The difference between them is that invalidity makes the trade mark invalid with retroactive effect (it removes it altogether from the Register of trade marks), and revocation applies as from the date the request is made to the Office.
Developing your brand
Your intellectual property (IP) strategy will evolve over the years and with it your need to expand. If your ambitions extend beyond the European Union (EU), you should seek an extension of your trade mark outside the EU.
There are various options for doing this. You can either file individual applications directly with any non-EU IP office or you can file an international application via the Madrid protocol.
The Madrid Protocol is an essential instrument in worldwide trade mark protection. It is an international registration system, which is administered by the World Intellectual Property Organization (WIPO) in Geneva and has been ratified by many countries around the world, including nearly all individual European countries, the US, Japan, Australia, China, Russia, and, in October 2004, the European Union
The Madrid Protocol requires a basic mark, which is then extended to other States that are party to the Madrid Agreement and/or Protocol. It is important for you to know that, legally speaking, you don't have to wait for your EU trade mark application to be registered before applying for an 'extension' of your trade mark outside the EU. However, there will be a dependency during five years between the basic EUTM and the International registration. Therefore, if your EU trade mark application never reaches registration, for whatever reason, your International registration will be lost.
The international application must be filed with the European Union Intellectual Property Office (EUIPO). In order to use EUIPO as the 'Office of Origin', the EU trade mark owner/applicant must be a national of an EU Member State or have a real and effective industrial or commercial establishment or domicile in the European Union. In other words, not all EU trade mark owners/applicants can file an international registration (IR) application based on an EU trade mark.
To file an international application, it is compulsory to use the official forms: Applicants may not use other forms or change the contents and layout of the forms.
- The EUIPO provides an e-filing tool, available in all official languages which has the same format as EUIPO EM 2 format. EUIPO strongly recommends the use of the e-filing tool to the extent that it gives guidance to the applicant, thus reducing the number of potential deficiencies and speeding up the examination. The e-filing tool is available in all EU official languages but a Madrid Protocol language must also be indicated (French, English or Spanish), as the application will be forwarded to WIPO in that chosen language.
- EUIPO EM 2 paper form (the EUIPO adaptation of WIPO MM2 form) is available in all EU official languages.
- WIPO MM2 form in English, French or Spanish
A handling fee of €300 must be paid to EUIPO when requesting the international application, while the international fees must be paid direct to WIPO. Any payment due to WIPO that has been sent to EUIPO will be returned to the applicant.
After having checked the content and completeness of the application, EUIPO forwards the international application to WIPO. EUIPO is required to notify WIPO of any relevant changes that affect the EU trade mark during the dependency period (five years following the date of the international application).
You can add more countries to your international registration once it has been registered by WIPO. Although this can be done through EUIPO as the Office of Origin, it is much simpler to file additional designations direct with the International Bureau of WIPO.
What can be an EU trade mark
An EU trade mark can consist of any signs, in particular words (including personal names), or designs, letters, numerals, colours, the shape of goods, or of the packaging of goods or sounds.
On 1 October 2017, as a result of the Amending Regulation (EU) 2015/2424, the ‘graphical representation requirement’ was removed.
In practice, this means that as long as your trade mark falls into one of the categories of trade marks accepted by the Office, and can be represented by the accepted formats, you can submit it as an application without having to represent it graphically.
What type of trade mark would you like to protect?
Depending on what you would like to protect (a word, a figure, a colour, etc.) you have different trade mark options. See your choices.
The signs that make up a trade mark must be capable of differentiating the goods and services of one undertaking from those of another.
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. These signs should remain available for everybody: for you and your competitors.
Still not clear? The following example should dispel any remaining doubts
Not distinctive
A consumer would not see this bottle, as presented here, as a distinctive sign capable of distinguishing one company from another. This sign should remain available for all companies.
Wine
Too descriptive
In this case, consumers will not see the bottle as distinctive, and the word 'wine' simply describes the content of the bottle. They will see it as a product description.
Joe
Bloggs
Registrable trade mark
However, in this example, although the bottle alone may not be distinctive, the addition on the label of a distinctive name would make consumers see it as a trade mark indicating one particular brand.
The EUIPO will refuse your trade mark application if it is believed not to fulfil these and certain other requirements. If you wish, you can read about other reasons why your trade mark could be refused (also called absolute grounds).
If you are in any doubt, you should seek professional guidance. We cannot provide such advice.
What kinds of trade marks can I register?
There are three kinds of trade marks 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 trade mark has to be owned by a single person: individual trade marks can be owned by one or more legal or natural persons. This means that there are multiple applicants.
The basic application fee for an individual trade mark starts at EUR 850 (electronic means)
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. They are often 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.
The application fee for a collective mark is EUR 1 500 (electronic means).
Certification marks were introduced at the EUIPO on 1 October 2017. They are a new type of trade mark at 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 organisation; 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 they do not run a business involving the supply of goods or services of the kind certified.
The application fee for a certification mark is EUR 1 500 (electronic means).
Trade marks examples
Word mark
Figurative mark
The Office accepts the following file format: JPEG
Figurative mark containing word elements *
The Office accepts the following file format: JPEG
Shape mark
The Office accepts the following file formats: JPEG, OBJ, STL, X3D
Shape mark containing word elements*
The Office accepts the following file formats: JPEG, OBJ, STL, X3D
Position mark
The Office accepts the following file format: JPEG
Pattern mark
The Office accepts the following file format: JPEG
Colour (single) mark
The Office accepts the following file format: JPEG
Colour (combination) mark
The Office accepts the following file format: JPEG
Sound mark
With the abolition of the graphical representation requirement, as and from 1 October 2017, EUTM applications for sound marks can only be an audio file reproducing the sound or an accurate representation of the sound in musical notation.
The Office accepts the following file formats: JPEG, MP3 (maximum 2 Mb)
Motion mark
The Office accepts the following file format: MP4 (video), JPEG (for series of still sequential images).
Multimedia mark
This is a new category of trade mark (as and from 1 October 2017).
The Office accepts the following file format: MP4 (maximum 20 Mb)
Hologram mark
The Office accepts the following file formats: JPEG, MP4 (maximum 20 Mb)
*Note: The trade mark types marked with an asterisk are not separate categories under the EU trade mark Implementing Regulation. However, they are differentiated in e-Filing for practical and technical reasons.
Goods and services
Your application for a European Union trade mark must contain a representation of the trade mark you want to register and a list of the goods and/or services to be covered by the mark.
There are certain rules for how to present the list of goods and services:
- The goods and services should be specified as accurately and precisely as possible.
- They should be classified under one of the classes of the Nice Classification.
The European Union Intellectual Property Office (EUIPO) has adopted the Nice Classification for classifying goods and services. The Nice Classification divides the goods and services into 45 categories (or classes).
Your EUR 850 application fee enables you to choose one class. For an additional fee of EUR 50 you can add a second class, and for three or more classes you will need to pay EUR 150 for each class.
Find and classify your goods and services
When you apply for a trade mark using any of our online application forms, the Five-step form and the advanced form, you will be able to search and browse through a list of goods and services known as the Harmonised Database.
This database contains terms that have already been accepted by EUIPO and by all national intellectual property offices in the European Union and beyond.
The fastest way to get your trade mark published
Selecting your goods and services from the Harmonised database allows us to process your application more smoothly. Your application could also be accepted for Fast Track, EUIPO's accelerated procedure to have your application published faster.
You can also use our ‘Goods and services builder' to prepare your list before applying. This is recommended for professional practitioners, as sometimes several applications need to be submitted at once.
Writing a specification of goods and services is a balancing act.
Think big
You, as a company, may actually be providing more goods and services than you think. Although you may feel certain of what market you are in today, think about how you want to develop your mark in the future. For example, if you manufacture sweets today, you might want to offer more goods (such as ice cream) in two or five years.
Be realistic
It might seem tempting to claim a wide range of goods and/or services, but remember, if you don't use your mark on all the goods or services you apply for, your EU trade mark will be vulnerable to attack.
If you narrow down your specification, you'll reduce the risk of conflict with other marks.
We would kindly like to remind you, that long lists of goods and/or services may lead to a number of disadvantages, namely:
- a higher risk of classification deficiencies;
- delays in publication and registration of the EUTM;
- an increased risk of conflicts with other trade marks (oppositions);
- an increased risk of a trade mark being eventually cancelled because of a similarity to an earlier mark or non-use of all the registered goods and/or services.
Please don't forget: Once you have filed your application you won't be able to add to your specification, so think carefully about which goods and/or services to choose.
Ownership
You will need to give us your details when you fill in the application form.
- The information given will be used to clearly identify you as the sole proprietor of your trade mark.
- We may have to contact you if we need additional information either during or after the registration process.
It is very important that you keep us informed of any changes made to your personal details, such as new contact telephone number, etc.
What information should you provide?
If you have previously filed an application with us, all you have to do is enter the unique ID that has been assigned to you. We use this number to retrieve your details so there is no need to retype them again.
You can find your ID number either in previous correspondence or by using the eSearch application.
When you apply for the first time, you will have to provide us with your details. These will then be kept on file for any future correspondence.
You will need to tell us if you are applying as a company or an individual.
Company
If you are a company, you need to provide us with the following details:
- Full name and legal form
- Country of registration
- Address
Individual
If you are an individual, you need to provide us with the following details:
- Name and surname
- Nationality
- Address
In both cases, it is very important that you also provide us with an email address, telephone number and fax number (if applicable) so that we can contact you easily.
How will EUIPO communicate with you?
The easiest and fastest way to communicate with us is through your online User Area.
It provides you with a secure platform from which you can interact with us electronically.
Please note that we accept emails only for informal, not official, communications.
Is it mandatory to appoint somebody to represent you?
As a matter of principle, applicants do not need to be represented. However, if the proprietor does not have their place of business, a real and effective establishment or their domicile in the European Economic Area, they must appoint a representative for all proceedings before the Office except for the filing of the application. The European Economic Area is made up of all European Union Member States plus Norway, Iceland and Liechtenstein.
A representative can be one of the following:
Legal practitioner (or equivalent, depending on the country)
A legal practitioner qualified in one of the Member States of the European Economic Area and with their place of business also in the EEA. In addition, they have to be entitled to act as a representative in trade mark and/or design matters in that State.
Professional representative
A professional representative whose name appears on the list kept by EUIPO.
Employee of a natural or legal person
An employee of a natural or legal person having their domicile or principal place of business or a real and effective industrial or commercial establishment in the European Economic Area may represent other legal persons provided that the two legal persons have economic connections with each other.
Route to registration
You can create and submit your application in three easy steps, using a form that guides SMEs and individuals based in the European Economic Area without the assistance of a trade mark professional.
There are three crucial pieces of information on the application form:
- Ownership - any individual or company can own an EU trade mark; the details are made public and must be kept up to date so that there can be no doubt who owns the mark.
- What can be an EU trade mark - your trade mark must be clearly represented.
- Goods and services - must be defined so that other traders understand what goods and services your application covers.
Through the links below, we'll show you how to apply for and register an EU trade mark. A successful application is not guaranteed but is more likely the better prepared you are.
In this section
Registration process
You have just applied for a trade mark. What happens next?
Once filed at the European Union Intellectual Property Office (EUIPO), your trade mark will be processed by us to check that it can be registered. There are various steps.
The timeline is composed of the 'examination period', the 'opposition period' and then the registration. The examination period starts with the receipt of the application and the ends with the publication of the application. The opposition period starts with the publication of the application and terminates with the end of opposition period. The registration takes place thereafter. The registered trade mark is then published.
Examination period
Opposition period
Registration
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Receipt of the application
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Publication of the application
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End of opposition period
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Publication of the registered mark
What happens during the examination period
The following workflow will give you an overview of the actions taken by EUIPO during the examination period. They occur almost simultaneously. You can follow the progress of your application status online by accessing eSearch or through your User Area.
The following is for applications filed direct with EUIPO. Find out about the route to registration for international applications designating the European Union (EU).
The timeline comprises the following steps: 'filing date', 'classification', 'formalities', 'absolute grounds', 'translation' and 'search'. Clicking on each of these steps provides more information. Once all the steps have been completed the trade mark is published.
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Publication of the application
Opposition period
Filing date
We check that your trade mark application contains the mandatory and basic information required: a request for application, a correctly identified owner, a clear representation of the mark and a list of goods and services. Payment of the basic fee must also be made within one month of the filing date. From then on, you should regularly monitor trade mark applications to check whether any of them conflict with your trade mark.
Classification
The goods and services you seek protection for are reviewed to see if they have been correctly classified and their nature has been clearly indicated. If you have used the Harmonised Database for classification, your list of goods and/or services will be accepted automatically.
This database is used in our online trade mark application forms, the Five-step form and the Advanced form, and is made up of terms that have already been accepted by all national intellectual property offices in the European Union (EU). It will also mean that the term is already translated into all other EU languages. Your application will therefore be processed more smoothly as there is no need for EUIPO to translate the terms in your goods and services selection. Your application could also be accepted for Fast Track, EUIPO's accelerated procedure to have your application published faster.
You can also 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.
Formalities
All the details you have entered on your application are reviewed to make sure that everything is as it should be; the signature, languages, owner and/or representative data, priority and/or seniority claims are all reviewed.
Absolute Grounds
Your trade mark is analysed to see whether it is distinctive but not descriptive.
Translation
Your trade mark application is translated so that details of it can be published in all the official languages of the European Union.
You could save this step in your application by choosing the goods and services for your mark from the Harmonised Database.
Search
If you request it when filing your application we carry out a search in the EU trade mark database for identical and/or similar marks. The results are sent to you before we publish your trade mark application. Owners of previously registered trade marks or trade mark applications quoted in the report are informed — by letter — about your trade mark application. This is called a ‘surveillance letter'. The results of both search reports and surveillance letters are for information only.
If we detect an error or have to tell you about an objection, we will send an official communication to your User Area indicating what we have found; you then have two months to remedy any deficiencies and reply. You may ask for an initial two-month extension of time to prepare your response. The first extension will normally be granted automatically but the second will need to be justified.
In some procedures, applicants (or their representative) will be contacted by phone by our examiners to remedy simple objections.
If we believe that your answer doesn't entirely address our concerns, or if you fail to respond, we will issue a final decision, either partly or entirely refusing your application or the claim made in your application (such as a priority claim). Alternatively, we might amend your application details if appropriate (for example, by deleting the description or adding a colour claim). Remember, if you are not happy with the outcome, or think there has been an error you have the right to appeal.
If your application is refused, it is still possible to convert (IP bridge) your EU trade mark application into national registrations, provided no conflict exists.
If no objection is raised, we will publish your trade mark in 23 EU official languages. This means that we make public the fact that you have applied for this particular trade mark for the goods and/or services specified.
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:
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. We decide 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 following diagram will give you an overview of the various steps of the opposition proceedings:
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', 'the cooling-off period', 'the adversarial part of the proceedings', and 'the end of the proceedings'. Clicking on each of these steps provides more information.
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Publication of the application
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Publication of the registered mark
Examination period
Registration
The 'cooling-off' period
If the notice of opposition is accepted, we send a notification 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.
Filing of an opposition:
Oppositions against EU trade mark applications can be filed using the appropriate online form.
We strongly recommend that you read the help files. They will give you guidance on completing and submitting the Notice of Opposition form.
Admissibility check
We check if the Notice of Opposition meets the formal requirements set out in the Regulations. In other words, we examine whether it is acceptable.
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 Office 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 Office gives the applicant two months to reply. Finally, the opponent is given the opportunity to comment on the observations submitted by the applicant. Generally speaking, these are the three stages of the process. However, EUIPO may agree to or request further 'rounds', if required.
End of the proceedings
The adversarial part of the proceedings comes to an end when EUIPO informs the parties that no more observations will be allowed. This means that the file is ready for the Opposition Division to take a decision on the opposition.
When we issue a decision there are various possible outcomes:
- The EU trade mark application does not conflict with the earlier right(s); the opponent then pays costs to the other party (EUR 320) and the application proceeds to registration.
- The EU trade mark application conflicts with the earlier right(s); the application then fails and the EU trade mark applicant pays the opposition costs to the other party (EUR 650).
- The EU trade mark application partially conflicts with the earlier right(s); the goods or services in conflict are then removed from the list and the application proceeds to registration (costs are generally shared between the two parties).
Please note that costs related to an opposition process must be paid to the other party and not to EUIPO.
The proceedings may also end at any time if the applicant withdraws their EU trade mark application or the opponent withdraws their opposition.
Costs may also be incurred if any party withdraws from 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 (IP bridge) your EU trade mark into national registrations, provided no conflicts exist.
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 Office explaining why they believe the trade mark should not be registered. We call this 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 Office 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.
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. Certain jurisdictions will accept a reference to our database (eSearch), while others will request a more official document, which you can obtain using the inspection of file request.
How to challenge an Office 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. Submitting an appeal is now quicker and easier than ever. You can access eAppeal directly through your user area, in the online services section, via our Forms and Filings section, and under Actions and Communications after accessing the file in eSearch Plus.