What european union trademark is and how to register it: proceeding, costs and advices

The European Union Trademark (often named also European trademark or Community trademark) may consist of any signs: words (including personal names), designs, letters, numerals, colours, the shape of goods, or sounds.

The registration of the European Union trademark allows you to simultaneously register your trademark in all the Countries of the EU.

In this article we talk about all the features of this type of trademark, the steps of registration, the costs and our advices.

European trademark or european union trademark?

The European Union Trademark is ineffective in all that States that, although European, are not part of the European Union. This means that the European Union trademark does not give you any protection in States such as Switzerland, Norway, Albania, Ukraine, Russian Federation, or the United Kingdom, just to name a few.
(For registering a trademark in these States you can use the international trademark registration or the filing there of a national trademark: the choice between the two protection will strictly depend on your business objectives).

Eva Troiani law firm can give you full assistance in this matter: thanks to the network of colleagues collaborating with her in Europe, she can take care of the registration of your trademarks both in the European Union States and in the non-EU Countries.

Therefore, even if you can someone speaking of “registering the European trademark” or “registering the trademark of Europe”, it is good to know that reference is only and exclusively made to the registration of the European Union trademarks.

The graphic representation of the eu trademark

With the reform of 1 October 2017, which transformed the Community trademark into European Union trademark, important innovations were introduced. Among them the graphic representation of the trademark, no longer mandatory.

According to the article 4 of the European Union Trademark Regulation n. 2017/1001:

“An EU trademark may consist of any signs … provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the Register of European Union trademarks (“The Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

Therefore, it is important that the representation of the trademark, even if carried out by other means, is likely to determine the object of protection with sufficient clarity. In this way, those categories of brands that are not susceptible to graphic representation – but which, for example, can only be represented in electronic format, such as multimedia brands or movement brands – become acceptable.

Unitary character of the european union trademark

One of the undisputed benefit of the European Union trademark is its unitary character.

The article 1, paragraph 2 of the EU Regulation provides:

“An EU trademark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, not shall its use be prohibited, save in respect of the whole Union. This principle shall apply unless otherwise provided for in this Regulation”.

In the light of the so called “principle of unity” the effects of the European Union trademark shall extend to all the States Member of the European Union and, in case the marks ceases to have effect, it will be similarly not effective in all the States of the European Union, being unable to explain its effects only in some Countries of the European Union but not in others. Thus, for example, the EU trademark cannot be declared invalid only in France and Poland and valid in the remaining Stated of the European Union or in any of them.

The registration of the EU trademark

The registration of the European Union trademark allows to simultaneously register the trademark in all the States of the EU, which are: Austria, Belgium, Bulgaria, Cyprus, Croatia, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Czech Republic, Romania, Slovakia, Slovenia, Spain, Sweden, Hungary.

Registering the trademark of the European Union: all the steps

The registration of the European Union trademark allows, through a single application filed to an office (EUIPO in Alicante), to get protection in an area which includes all the States Member of the European Union. The application can be filed online.

Let’s see in detail all the steps:

• The European Union trademark application must be filed in one of the languages of the European Union with the indication of a second language, to be chosen among the five official languages of the EUIPO, namely English, French, Italian, German and Spanish.
• EUIPO, after verified that the application meets formal requirements, the filing fees have been paid and that there are no absolute grounds for refusal.

“shall, at the request of the applicant for the EU trademark whien filing the application, draw up a European Union search report (“EU search report”) citing those earlier EU trademarks or EU trademark applications discovered which may be invoked under article 8 against the registration of the EU trademark applied for” (namely potentially conflicting signs: article 43, 1) EU Trademark Regulation n. 2017/1001).

• Where, at the time of filing the European Union trademark application, the applicant requests so, Trademark Offices of the member States of the European Union which gave their availability, are required to conduct a search on their respective National Trademark Registers.
• The office shall transmit without delay to the applicant for the European Union trademark the EU search report and any requested national report received so that the applicant may evaluate the results.
• Then, if the Office does not issue any objection against the European Union trademark application, the latter shall be published in the Official Bulletin of the EU Trademark and third parties can file an opposition to the registration of the EU trademark within three months from the date of publication.
• If an opposition is filed, after the formal examination of the opposition, the EUIPO grants the parties a period of time (which may be extended upon request of both parties up to a maxi-mum total of 24 months) for reaching an amicable agreement (cooling off period). If either of the parties wants the adversarial part of the proceedings to commence, they can opt out and inform the Office thereof unilaterally, without the consent of the other party (opting out).
• After the expiration of the cooling off period (or earlier, in case of opting out), the opposition starts, and the parties have the possibility to file grounds and evidences in support of their arguments.
• Against the decision of the Opposition Division is given the possibility to appeal to the Board of Appeal of the EUIPO. The decisions of the Boards of Appeal may be appealed to the General Court of the European Union, whose decisions can be appealed to the Court of Justice.
• According to the Article 51 of the European Union Trademark Regulation

“When an application meets the requirements set out in this Regulation and where no notice of opposition has been given … or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the trademark and the particulars referred to in Article 111 (2), shall be recorded in the Register. The registration shall be published”.

As you can see, the proceeding can be long and complex. This is why we advise you to reply on an industrial property professional who will be able to assist you in the entire registration phase of the trademark and who will be able to support and advise you even if objections are raised or oppositions filed against your trademark.

Costs for the registration of the European Union trademark

There are many variable factors to be taken into consideration for the costs of the registration of the European Union trademark, first of all the fees to be paid to the EUIPO: the basic fee covers one class for Eur 850, the fee for the second class of goods and services is Euro 50 and the fees for three or more classes is Eur 150 for each class (same costs are for online trademark renewal).

Furthermore, you should add the costs for a trademark search (highly recommended in order to avoid to register a trademark identical with or similar to another trademark, already filed or registered) and Attorney fees of the professional who will take care of the matter.

Duration, renewal and genuine use of the European Union trademark

European Union Trademark (in short EUTM) shall be registered for a period of 10 years from the date of filing of the application and may be renewed indefinitely for further periods of 10 years.

However if , within a period of five years following registration the proprietor has not put the EU trademark to genuine use in the Unione in connection with the goods or services in respect of which it is registered, or is such use has been suspended during an uninterrupted period of five years, the EU trademark shall be subject to the sanctions provided for in the EUTM Regulation (article 18), unless there are proper reasons for non-use.

At the end of 10 years you can decide to renew it: you can evaluate whether to keep the protection for all the classes originally claimed or whether to reduce them (but you cannot add other classes and here we tell you why).

If you do not renew it, the trademark will expire.

If you wish to correctly evaluate strategies and costs, we advise you to get in touch with an IP expert.

When proceeding with the renewal of the EU trademark and how

The renewal of the European Union trademark has to be done 6 months before the deadline or in the six months following the deadline by paying a surcharge of 25%. The renewal must be filed to the EUIPO and can be either a paper application and an online form (this latter solution is faster and cheaper).

We invite you to remind that the trademark must be identical to the one registered 10 years earlier; if you have done a restyling, we suggest you to get in touch with an IP expert, who will be able to tell you if a new trademark application is necessary.

Some suggestions on the European Union trademark

As we have seen, one of the most important and advantageous characteristic of the EU trademark is its unitary character, namely that its effects are valid in all the Member States of the European Union.

In the light of the above, it is advisable to pay particular attention to the creation of the trademark and to the requirements of distinctive capacity and novelty, which must exist in all the European Union Members. Thus, for example, it is not sure that a word with sufficient distinctive character in the Italian language is equally endowed with distinctiveness also in the other languages of the States of the European Union (we talk about it in “The importance of distinctive character in EU trademarks”, where we show specific cases).

In view of the foregoing, we invite you to take into consideration how important is that an IP professional carries on a trademark search in order to ascertain the validity of the sign.

After the registration we invite you to put the trademark under surveillance.

Get in touch with an IP professional and instruct him/her to take care of the surveillance of your trademark: thanks to its skills, it will be able to promptly inform you in case someone is trying to register a trademark identical with and/or similar to yours.

Eva Troiani law firm can take care of each aspect of your European Union trademark: from the trademark search, to its defense and registration. Do not hesitate to contact us!