The European trademark registration
A European trademark registration provides protection against infringements in all 27 countries of the European Union (EU) with one application. The trademark owner will be granted an exclusive right (monopoly) to use the mark. The EU currently comprises the countries France, Germany, England, Ireland, Sweden, Denmark, Finland, Italy, Spain, Austria, Portugal, Greece, Belgium, the Netherlands, Luxembourg, Cyprus, the Czech Republic, Estonia, Hungary, Bulgaria, Romania, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia. After a successful application procedure your trademark is approved and registered in the European trademark register. This register is managed by the Office for Harmonization in the Internal Market.
Why apply for a European trademark registration?
If you are going to use a trademark in a (large) part of the EU, then a European trademark registration is recommended. Without registration of your trademark, you are completely powerless in most countries if someone else uses your trademark or a similar trademark. There are many different types of trademarks that you can register, such as a name (product name or company name), a logo (image), a package, a slogan or a combination of the aforementioned types. Without registration you run a big risk. You often cannot act against the use of others of your trademark. In addition, it is possible that you may no longer use your own trademark because someone else has registered it as a trademark.
The registration procedure for a European trademark application
To protect a trademark, we first advise you on the recordability of the trademark. In addition, we draw up a description of the products and / or services for which the trademark is used and for which it must be protected. After this, we submit the application to the OHIM in Alicante. You will receive from us the registration number and the filing date of the trademark application as well as additional information about the further procedure. The OHIM then assesses whether the trademark application meets all the conditions and whether the trademark is sufficiently distinctive. After some time your trademark will be published, after which older right holders will have three months to object to your application. We call this objection opposition and should be based on older existing rights, such as a trademark or trade name right, in one of EU member states. The trademark is registered if there is no opposition. The duration of the protection is 10 years and can be renewed by 10 years afterwards.
When is my trademark protected?
The protection of your trademark starts when the trademark is registered. This is only the case once the entire application procedure has been completed. This usually takes about 6 to 8 months, depending on the circumstances. When your trademark is registered, you are protected from the filing date (application date). If your application was made earlier than other trademark applications, you can therefore take action against these trademarks as soon as your trademark is registered.
Using your trademark in a small part of Europe
Even if your trademark is only used in one or a few countries in Europe, it is wise to register the trademark at European level. This prevents you from having or can not get protection in other European countries if you want to expand here.
Prior trademark search into the availability of your trademark
Having a trademark test carried out is not mandatory, but it is wise. After all, without research you do not know whether obvious obstacles can be expected in the form of other similar or identical trademarks. Not only can your own trademark application be blocked, but the party can also prohibit you from using your trademark any longer. If you had known of the existence of this party in advance, you could have opted for a different trademark. For more information about doing trademark research in Europe, please contact us.
Advantages of a European trademark registration
- The European Trademark Registration consists of only one application, one procedure and one registration in the European Trademark Register. Separate registrations in the Benelux and / or other countries are therefore not necessary.
- The costs of a European registration are considerably lower than if you apply for your trademark separately in each country.
- You will receive protection for the entire area of the European Union, including in countries where you do not use the mark. Use in one country is often sufficient to meet your duty of use.
Disadvantages of a European trademark registration?
Because you get protection for the entire area with a European trademark registration, this also means that any local objection in this area may lead to a blocking or cancellation of your registration or application. When someone successfully submits opposition on the basis of an older local law, for example a French trademark registration, this has consequences for your entire registration. Of course, this risk is an important part of your consideration to go for a European trademark registration. You can also opt for the International Registration procedure whereby you receive protection per country / area and this risk therefore plays a much lesser role.
Alternatives for the European trademark registration?
You can also protect your trademark abroad via the International Trademark Registration System. Through this system we make one application at the World Intellectual Property Organization (WIPO) in Geneva. After approval, the application is forwarded to all countries / areas for which protection is requested. An objection in a particular country therefore has no negative consequences for the other countries. In this system, all non-European countries can also be applied for, such as the United States, Australia, China and Japan.
For more advice on the above possibilities, you can of course contact the trademark lawyers of Merkenbureau Heemskerk.
At our trademark agency you are always assured of a legally trained trademark advisor. Unlike many trademark consultants from other agencies, our trademark consultants always have a legal education with additional specialization in the field of Intellectual Property. As a result, in addition to practical knowledge, we also have the legal quality to advise you on the protection of your trademark portfolio in Europe. We offer the following services:
- Trademark research with advice on possible risks in terms of availability
- Coordination and advice on the best protection strategy for your trademarks
- Advice on the recordability of your trademark
- Submit, supervise, monitor and handle the entire registration procedure
- Managing your trademark portfolio and monitoring your trademark and essential deadlines
- Conflict resolution, advice, negotiations and other legal services
Cost of a European trademark application
Our fixed costs for a trademark application that runs smoothly can be found in our rates list. Our starting price applies to an application in a maximum of two classes. An overview of the classes can be found on www.merkenbureauheemskerk.nl or you will be sent on request. If the application encounters problems along the way, such as oppositions from one or more EU countries, the handling of these costs (based on our hourly rate) that we discuss with you in advance.
Start of registration
In order to be able to carry out a European trademark registration for you, we need the following information and forms, which you can send to your permanent trademark advisor and mention ‘European trademark registration’. After receipt we will determine the goods and services classes in consultation with you, after which we start the registration immediately.
- Indication of the mark to be registered.
- A description of the products and services for which the trademark is or will be used (a brochure or the address of a relevant internet site is often usable).
- A copy of an extract from the Trade Register of the Chamber of Commerce.