If you’ve been thinking about doing business in Europe, you might have wondered how one may register their trademark there. It is indeed an important step in taking your business overseas, as trademark registration will confer an exclusive right to the use of your trademark in Europe.
As a general rule, the legal protection of intellectual property is national, meaning that, when applying for trademark protection, one must usually do so in each of the markets in which one intends to offer their products and/or services.
However, when it comes to the European Union (EU), it is possible to file a trademark application with the European Union Intellectual Property Office (EUIPO), which is the trademark office responsible for managing trademarks filed for protection at the European level. The European trademark (EUTM) will automatically provide effective protection throughout the EU territory. It is therefore not mandatory to have filed a trademark with a national trademark organization in any particular EU country beforehand.
What are the steps ?
First, you must ensure that the trademark for which you wish to obtain protection through the EUIPO has a distinctive character in the 27 Member States of the European Union. It cannot, however, be descriptive. In other words, consumers should be able to recognize the element you have chosen to be your trademark and should thus be able to distinguish your products and/or services from those of other companies, but the trademark cannot describe the products/services offered themselves.
If you have previously filed the same trademark in any country that is a party to the Paris Convention for the Protection of Industrial Property, or to the Agreement establishing the World Trade Organisation (the United States of America being a party to both), you will have a right of priority of six months from the date of filing of the first application. For instance, if you have filed an application in one or more of the EU Member States in the previous six months, or in the United States, you will benefit from this right of priority, meaning that the date of filing of the first application shall be deemed to be the one for the filing with the EUIPO. If the previous filing was done more than six months before the one with the EUIPO, you won’t be eligible to benefit from the right of priority.
In general, any applicant may have recourse to the services of a representative to represent them before the EUIPO throughout the process, no matter where they are from. However, if you have no domicile or principal place of business, or a real and effective commercial establishment within the EU, you must be represented by a professional representative 1 or an employee representative 2 . The authorization used to appoint said representative will either grant them with a General Authorisation (i.e., in all proceeding in relation to all present or future EUTM applications or registrations and for other proceedings before the EUIPO) or an Individual Authorisation (for specified procedures before the EUIPO). It is recommended to submit the Authorisation Form together with the EUTM application.
Before starting the application process, be sure to check the availability of your mark in the EU. Indeed, it won’t be possible to register your mark if someone else has already done so before you. Two databases allow for the search of the registered EUTM: eSearch plus and TM view, both available through the EUIPO’s webpage.
The filing application must contain a list of the goods and services, which are to be classified according to the Nice Classification, which classifies them in 45 classes – classes 1 to 34 concern goods, whereas classes 35 to 45 concern services. The site TMclass, also available through the EUIPO webpage, helps to search and qualify the goods and services.
You will then have to choose on the EUIPO website the relevant form to be filed, depending on the element for which the EUTM is filed. The Easy Filing Form is designated for SMEs and individuals within the European Economic Area without a legal representative and is intended for word or figurative trademarks only. The Five Step Form is intended for intellectual property experts when handling straightforward cases concerning word, figurative, shape or sound marks. Finally, the Advanced Form is to be used by intellectual property experts when handling complex cases and extends to all types of marks.
No matter which type of form is filed, it is possible to benefit from the accelerated procedure called Fast Track. In that case: (1) you need to select the goods and services your trademark will apply to from a database of terms that have already been accepted by the EUIPO; and (2) you will need to pay upfront the application fees (850 € plus an additional 50 € fee for a second class selected in the application, and a 150 € fee for any subsequent class chosen after the first two).
Admitted as lawyers in both the U.S. and Europe, and with particular expertise in intellectual property, we are ideally positioned to help you take your business abroad. Contact us today!
1 “A legal practitioner must be qualified in an EU Member State and entitled to act in that Member State as a representative in trademark or design matters and have their place of business in the European Union. A legal practitioner may be linked with an existing association of representatives, in which case the ID of the association should be used.” ; see: < https://euipo.europa.eu/ohimportal/en/representatives >
2 “Where the employee representative is employed directly by the applicant, it is sufficient to give their name and surname. Where they work in a company (with a real and effective establishment in the EU) that has economic connections with the applicant, information on the nature of those connections and the name of the company must be given.”