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, cancelled 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
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 ensure 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
We also have a range of search packages on offer to advice 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
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
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
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
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
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 fulfil 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 bona fide 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 clearly
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
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
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
Examining the EU Trademark Application
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
Opposition against a EUTM application may only be made on the basis of earlier
The trademark applied for is identical to an existing mark and for same
goods/services as the earlier one
he mark applied for is 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 for 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
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
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.
Inform TrademarkCart of any changes in your contact details. If this information is
incorrect then we will not be able to inform you of upcoming renewal deadlines or
other issues regarding your mark. For example, notifications from the EUIPO, of any
trademark applications filed subsequently that they consider conflicting with your
The EUTM registration may become vulnerable to revocation for non-use, if not used in
the EU for a period of 5-years or more. This revocation is not automatic but an
action can be brought on by a third party, wishing to remove your inactive trademark
and bring it to the notice of EUIPO. And register their own trademark. Faced with
such a revocation action, you would have to provide proof of use for your trademark
in the relevant 5-year period. Compiling the proofs can be costly and
time-consuming. To reduce this cost, you must keep records to show the use of your
mark. Evidence such as advertising, features in magazines, invoices showing the
trademark in use, business cards, brochures, and use on the Internet.
It is important to use the mark correctly complying with the format that it is
registered. Trademarks should be used in the singular and as an adjective. Never as
a noun or a verb. It is also wise to state that it has been registered in Europe.
Which Countries are Covered under the EUTM Registration?
- Benelux* (Or Belgium, the Netherlands, and Luxembourg)
- Czech Republic
- United Kingdom
- Slovak Republic
FAQs on Trademark Registration
A trademark is a word, design, symbol, or any other device that distinguishes
and identifies products & services in the marketplace. A trademark can become a
company’s most valuable asset when consumers identify the business with its
trademark. Inadequate protection of your trademark in Europe can have major
consequences for your company. 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.
Anything that differentiates your product and is capable of getting represented
graphically can be registered as a trademark. Such as: • Word • Symbols •
Abbrevations/Initials • Shapes • Slogans • Sounds • Colours • Logo’s 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.
Searching for trademarks before applying is an important step to minimise any
possible opposition and/or conflict. Let us at TrademarkCart help you out in
searching for registered marks.
You can, but without it, your application is vulnerable. Simply because you
don’t know how unique your trademark is, and how many other, similar trademarks
there are in this market. Having a thorough EU trademark search before filing is
the smart thing to do.
When you apply for a EUTM registration, you have to define the classes for which
you are applying for. Classes are the products and services that may be
trademarked and will be associated with your mark. The International
Classification of NICE is the system that is in place for categorizing products
& services. This system has a total of 45 classes, 34 for products and 11 for
services. The EUTM only offers protection within the class chosen at the time of
registration. This allows two identical trademarks to coexist in separate
classes. Before applying for trademark registration under EUTM, we will assist
you in ascertaining the correct classes for your trademark application.