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A European trademark, or also referred to as Community Trademark, created with Regulation 40/94 of the Council of Europe allows obtaining a trademark valid in the whole European territory, with only a single application. The European trademark is a title that can be recorded, transferred, allotted, canceled, or forfeited. If claimed, its use would be forbidden in all of the European countries, not in a particular only.
This European Union TradeMark (EUTM) is a means to cost-effectively secure pan-European protection covering all 28 European Union Member States with a single registration. Before March 2016, these were referred to as Community TradeMarks (CTMs).
The EU countries, under this, are those European countries that are designated under the Paris Convention or to the Agreement establishing the General Agreement on Tariffs and Trade (GATT).
Before filing a trademark, the client has to understand how to deposit it, verbally or graphically, in which class, and where. The trademark search for novelty is important to be taken to insure that it is unique and that it has not been recorded yet by someone else.
Once the preliminary investigation has been made with the help of a professional expert, it is possible to apply for registration.
Before applying for registration of a new trademark, a search to check if the trademark is free for use and registration is a must. Allow TrademarkCart to carry out a comprehensive search for any existing identical trademarks on the EUTM Register. Just register yourself with us and we will do this Trademark search free for you.
We shall also advise how best to obtain registration of your trademark registration, where you need it. For example, in a particular country, complete EU or further, International Trademark.
We also have a range of search packages on offer to advise upon the most appropriate package for you for any confusingly similar trademark that exists. Or if one such is required, as also the costs.
Also recommended is to investigate the use of “unregistered” trademarks. For instance, on the Yellow Pages, at Companies House, Internet, and Social Media sites.
How to file an Application for European Trademark
Filing for registration of a European trademark can be presented at the European Union Intellectual Property Office (EUIPO) based in Alicante (Spain). To apply for registration requires downloading the stipulated form from the internet. In it, the applicant’s (or the owner of the trademark) personal data, is to be filled. The trademark’s data and the classes of products or services claimed are to be specified.
As mentioned above, the class needs to be chosen very carefully, out of the International (Nice) Classification of Goods and Services to check the most current edition, at the moment of applying for registration. According to the guidelines of EUIPO, it would not be possible to indicate the number of classes but it is necessary to list the concerned products and services.
The natural persons living in or citizen of the EU, legal persons with main offices is in the EU, and also natural or legal persons with citizenship, main office, or a stable organization in EU countries legitimately have the permission to record a European trademark. This system of recording exists along with the system of recording national and international trademarks according to the Madrid Agreement.
Filing the Application
To file your EUTM application, you need:
A copy of your trademark (preferably in JPEG images, if you are filing to protect your logo),
Applicant’s name and address. This may be a natural person(s) or a legal entity, and
The goods and/or services concerning which the trademark is used or intended to be used.
If the EUTM application claims priority from a corresponding foreign trademark application, you need to also provide the filing date, application number, and country where it was first filed.
Once the application has been submitted, an official filing receipt is issued by the European Union Intellectual Property Office (EUIPO) instantly. The receipt confirms the filing date, the trademark, and the goods and/or services applied for, allocating an application number.
EUTM Register search
As part of the EUTM trademark application process, the EUIPO searches the EUTM Register for existing identical or similar trademarks. The results of this search are sent to the applicant for information and the EUIPO notifies the holders of the earlier trademarks about the later application. The proprietors of any existing rights may object to the registration of a later trademark during the publication period.
What Cannot Be Registered?
Under Article 7(1), a sign may not be registered if:
It is not capable of separate the goods or services of one undertaking from those of others and thus does not fulfill the requirements of Article 4 CTMR.
The mark is devoid of any distinctive feature.
It is purely descriptive with relation to the kind, quantity, quality, value, intended purpose, geographical origin or the time of production of the goods or rendering of the service, or other aspects of the goods or service
Consists exclusively of signs or indications that have become customary in the prevailing language or the bonafide and established customs of the trade
Consists exclusively of the shape which results from the nature of the goods themselves, or the shape that gives substantial value to the goods, or the shape of goods that is necessary to obtain a technical result
It is contrary to public policy or accepted principles of morality
Is of such a nature as to mislead the public. For instance, doesn’t depict the nature, quality, or geographical origin of the goods or service
Has not been authorized by the competent authorities and must be refused under the Paris Convention
Includes badges, emblems, etc. other than those covered by the Paris Convention, and which is of particular public interest, unless the proper authorities have agreed to their registration
For trademarking of wines or spirits, if the sign consists of a geographical indication identifying wines or spirits which do not have that origin
Contains or consist of a designation of origin or a geographical indication registered under the Regulation (EEC) No. 2081192 when they correspond to one of the situations encompassed in the Article 13 and concerning the same type of product, on condition that the application for trademark registration has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication
Examining the EU Trademark Application
An application for EUTM undergoes a two-stage inquiry:
Absolute grounds (which is an assessment of whether the trademark applied for is descriptive, non-distinctive, or customary in the applicable trade). It should be noted that the EU has 23 official languages and as such, the word elements will be considered in all languages. Therefore, if a word is descriptive in any of the EU languages, it may be rejected
For any objections raised during the examination, TrademarkCart shall advise the most appropriate course of action.
The applicant must indicate a second language which must be a language of the Office and the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings. The languages allowed in the Office are English, French, German, Italian and Spanish.
Publication and Opposition
Once the examination has been completed, the EUTM application will be published in the online Official Journal. And a 3-month period begins. During this, the third parties have the opportunity to file an opposition. For instance, any prior registered or unregistered rights.
Opposition against a EUTM application may only be made on the basis of earlier rights: –
The trademark applied for is identical to an existing mark and for the same goods/services as the earlier one
The mark applied for is the same with an existing one and is for similar goods/services as the earlier mark
Application is for a trademark similar to an earlier mark and same as or is similar goods/services as the earlier one
Mark applied for is same as or is similar to an earlier one with goodwill
Generally, the opposition rate against EUTM applications is far more than that of UK trademark applications. Largely because the holder of an earlier EUTM registration or earlier national registration from any of the Member States may oppose a later EUTM.
After publication, once the EUTM application is accepted, the Certificate of Registration will be granted by the EUIPO. This document specifies the registration details and includes a representation of the registered trademark, the goods and services covered, and, also, the filing and registration dates.
These Certificates are now issued electronically and are downloadable from the EUIPO website.
Once your EUTM application has been registered you may use the ® or the ™ symbol to indicate that your mark is now registered. This cannot be used until the trademark is registered.
You may also wish to write “[YOUR TRADEMARK] is a Registered Community TradeMark of [YOUR NAME]”. This alerts others about your claims and can act as a deterrent to infringement.
European Union TradeMark (EUTM) Renewal
A European Union TradeMark registration can last forever, provided that it is renewed every 10-years and that it is used in the EU concerning only the goods or services for which it is registered. A EUTM registration can be subject to an action for revocation for non-use, 5-years after registration.
We file trademark applications directly at the European level and International level, as well. Using our consolidated network of specially chosen foreign attorneys. Having specific skills to satisfy your every need.
Our long experience in the field of registration, renewal, and protection of trademarks worldwide comes from working incessantly and watching the evolution trends of the law in this field, attentively. Due to which, we are also able to address any new forms of protection that can help artists and companies and provide the best value to our fees.
We’ll also ensure that all renewal deadlines are scheduled to remind you, well in-time when renewal is due, ensuring that your rights are maintained.
Through our qualified and experienced European Trademark attorneys, TrademarkCart works to protect your brand, fully and proactively, with registered trademark rights. These can also be used to achieve lucrative licensing and assignment deals.
How to maintain my Trademark?
In addition to the timely renewal of your trademark registration, there are other steps you can take to ensure the trademark remains active and well protected.
Which countries are covered under the EUTM Registration?
Frequently Asked Questions
A European Trademark ensures exclusive advantages to a particular brand for the covered goods & services. Someone else can also be authorized to use the trademark in return for payment.
To protect your business in the best way possible, you should consider registering multiple trademarks. For instance, your company name & specific product name or logo as a trademark, trademark on your company’s slogan and its logo. Our trademark attorneys will gladly advise of all the options as may be relevant for your company and its potential trademarks.
It is up to you whether you want to take national, regional, EU-wide or international registration of your mark.
EUTM is registered at the EUIPO. It will not actively check for existing trademarks when someone tries to register its mark. Therefore, problems and objections are raised when a third party registers a similar trademark. Therefore it is advised to have a system in place to check for future trademark applications.
The trademark attorneys at TrademarkCart are ready to help you to take out the monitoring of any similar trademark applications.
Moreover, a EUTM application may be transferred or assigned, subject to rights levied in execution, being involved in insolvency proceedings and licensed, among other possibilities.