The EU countries are: Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.
United Kingdom stopped being an EU member on January 31, 2020.
Is your trademark going to be valid in the UK if you filed it in the EU?
The UK left the European Union on 1 February 2020. Any existing registered EU trademarks will continue to be valid in the remaining member states of the EU and will automatically be cloned into a comparable UK registered trademark, without any additional costs, on 1 January 2021.
All priority and seniority claims will be inherited in the UK registrations. UKIPO will not issue registration certificates and will not contact trademark owners or their representatives. The cloned UK registration number will be composed of the Prefix UK009 and the last 8 digits of the existing EU registration number. No action is required on your part.
If you already have a registered UK trademark and registered EU trademark, you will end up with 2 UK registrations, one of which later simply does not have to be renewed.
If your pending EU trademark has not registered on December 31, 2020, it will not be cloned in the UK and won’t be valid in the UK later.
EU Trademark registration process
Step 1: Search
Prior to filing a trademark search should be done. It can be ordered online on our website.
Please contact us with your trademark and a list of goods and/or services of interest and we will do a free trademark search for you.
Step 2: Filing your application
In order to file your EU trademark application, we need:
If your application claims priority from a corresponding foreign trademark application, please provide the filing date, application number, and country of first filing.
Your trademark will be submitted electronically after you approve it.
We’ll get confirmation of the filed application and filing receipt immediately. It will confirm the filing date and an application number.
Step 3: Examination
Your EU trademark application will be reviewed within a month, if we filed your trademark application via Fast-Track.
Your application is examined on the following grounds:
EUIPO perform relative examination, which includes the formalities examination and the examination as to absolute grounds for refusal, especially classification and descriptiveness.
If an examination objection is raised, the Examiner will set a period for the applicant to respond.
Step 4: Publication
Once the examination stage is completed, the application will be published for opposition. Within a three-month period, third parties have an opportunity to file an opposition based upon prior registered or unregistered rights.
The most common ground for an opposition is confusion with a prior filed or registered trademark.
Some other grounds are descriptiveness and bad faith.
About 5% of all applications are opposed and many oppositions result in a settlement.
A “cooling off” period may also be obtained. Cooling off period provides an opportunity for parties to negotiate and hopefully settle.
Step 5: Registration
One week after the end of the publication period, the EUIPO will issue an electronic registration certificate. There is no paper registration certificate.
The registration certificate confirms the registration details and registration dates.
Once the EU trademark application has registered you may use the ® symbol with the use of your mark in the EU to indicate that your trademark is now registered. Please do not use ® symbol before registration.
You may also wish to use the following notice: “[YOUR TRADE MARK] is a Registered EU Trade Mark of [PROPRIETOR]”. This alerts others to your rights and can act as a deterrent.
Next step: Renewal
A EU trademark registration can last indefinitely, but it has to be renewed every 10 years. You should also preserve evidence of your use of your trademark. Please note that your trademark must be put to “genuine use in the European Community” within five years of registration. If the trademark has not been used, without a very good reason, for five years or more, then the registration may be cancelled.
A Power of Attorney, POA in short, is a legal document that authorizes an entity to represent or act for another person, usually, in the managing of the person’s property, business or private affairs. The former is called the Attorney or Agent whereas the latter is commonly known as the Principal.
In Trademarks, a Power of Attorney is required to appoint an Attorney on your file so he/she can represent you before the respective Trademarks Office.
Having said that, in many countries including the US, UK, Europe, Canada and Australia you don’t need to sign a POA for a standard trademark application (power of attorney is already implied when you entrusted your attorney/agent trademark registration). However, there are countries, such as, China, Mexico, Russia and India where a POA signed by the owner or any other person legally bound to the owner is required in order to file a trademark application.
In the US, when an applicant wishes to replace its existing attorney and appoint a new attorney, it needs to sign a Power of Attorney authorizing the new attorney to prosecute the trademark application.
There are 3 ways how you can proceed:
What happens after I buy a trademark package?
The choice is yours. Make the first step now.
The fastest guaranteed way to get a trademark registered for Brand Registry is to file a word mark (without logo) or a logo in Germany using the accelerated examination option. It takes up to 4 weeks with the accelerated examination option and about 2-3 months with regular examination.
We always file electronically so this ensures the fastest processing of the trademark application.
Also, in our experience, trademarks filed in a single class results in the quickest registration.
Filing in the UK or the EU will also ensure a quick entry into Brand Registry (about 3.5-4 months).
Once you provide us with a list of products and services you want to include in your application, we will properly classify them to make sure we qualify for the fast trademark examination (Fast-track in the EU, for example).
If you are interested in protecting your trademark, probably you know that the protection a registered trademark grants you is not worldwide but rather territorial, for example, having a US trademark enables you to enforce your rights only in the US. Likewise, an EU trademark gives you coverage in all 28 member countries of the EU but it does not protect you in the US.
The EU applies an “all-or-nothing” principle when it comes to acceptance of a trademark for registration.
What does it mean?
It means that an EU trademark application is denied registration if it has grounds for refusal in only one member state. For example, the word “Casa” means “House” in Spanish, so you can’t get registration in the EU for “Ideal Casa” if you are selling “house accessories” or offering “housing service” as such a trademark may be considered descriptive of the products or service and therefore refused on absolute grounds.
In other words, your trademark needs to be distinctive and not descriptive of the products and services that you offer under the trademark in all the member states of the EU. In this way, the EU is able to give you protection in all its member countries. If you get an EU registration, you either get it for the entire EU or none at all.
However, in case an EU trademark application is refused on such grounds, it can be converted into a national trademark application with the same filing date in other EU member countries where the ground of refusal is not applicable. But the protection will be limited to that particular country only. Additionally, converting an EU trademark into national filings will be expensive and more time consuming.
Similarly, earlier rights can be enforced from a party that doesn’t have an EU trademark rather a national one from an EU member state. That means if a party opposes the registration of your EU trademark application, their opposition will be taken into account even if they don’t have an EU registration.
How to increase chances for your EU trademark application to achieve registration? Conduct a thorough trademark search (common law, Google, social media and, of course, EUIPO database). Trademark Angel can help you to determine if there are any similar trademarks in the EU to minimize the risk of getting an opposition.
Every trademark application must list the specific goods and services that the trademark will cover.
Products belong to trademark classes 1 to 34. Services belong to classes 35 to 45.
Products are tangible, you can touch them. Services are intangible.
Below is a rough classification (class headings) just to give you an idea of general categories (please note that the below list cannot be used for trademark filing)
Products
Class 1: Chemicals (including those used in agriculture, industry and science)
Class 2: Paints, coatings, varnishes, colorants for food.
Class 3: Cosmetics, creams and serums, cleaning products including soap and shampoo, bleaching and abrasives, non-medicated toiletry preparations, false eyelashes, essential oil, perfume
Class 4: Fuels, industrial oils, greases, lubricants, candles
Class 5: Pharmaceutical and veterinary products, food supplements and vitamins, baby food, disinfectants, fungicides, herbicides, plasters, dental wax
Class 6: Metals, metal castings, metal hardware, metal containers, locks, safes
Class 7: Machines and machine tools and their parts, motors and engines (except for land vehicles)
Class 8: Hand-operated tools and implements, razors, cutlery
Class 9: Computers, computer hardware, computer cables, cell phones and cell phone cases, data carriers, computer software, downloable publications including e-books, videos and podcasts
Class 10: Medical and dental instruments and apparatus, massage apparatus, sex toys
Class 11: Products for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes including lamps and kettles
Class 12: Land, air and nautical vehicles, motors and engines for land vehicles
Class 13: Firearms, ammunition, explosives, fireworks, holsters
Class 14: Precious metals, watches, jewellery
Class 15: Musical instruments
Class 16: Paper, items made of paper, stationery products, artists’ products, printed products including photographs, stickers, notebooks, party ornaments of paper
Class 17: Rubber, asbestos and plastic Items, pipes and tubes
Class 18: Leather and leather goods, bags, wallets, animal apparel, collars and leashes for animals
Class 19: Building and construction materials (non-metallic), non-metal monuments
Class 20: Furniture, mirrors, picture frames, storage containers not of metal, party ornaments of plastic
Class 21: Kitchen utensils, crockery, containers, cleaning implements, toothbrushes
Class 22: Ropes and strings, tents, nets, awnings, sacks, padding, canvas material and raw fibrous textile material
Class 23: Yarns, threads
Class 24: Textiles, fabrics, blankets, covers, towels
Class 25: Clothing, footwear and headgear
Class 26: Sewing products, lace and embroidery, artificial flowers, hair decorations like ribbons, false hair
Class 27: Carpets, linoleum, wall and floor coverings, wall hangings
Class 28: Sports equipment, video game apparatus, games, toys, Christmas decorations
Class 29: Dairy products, meat and fish, processed and preserved foods, including dried, frozen and cooked fruits and vegetables, milk, eggs, edible oils and fats, jamps, jellies
Class 30: Staple foods, spices, bakery products, confectioneries, tea, coffee
Class 31: Fresh fruit and vegetables, live animals, animal food, seeds, fresh herbs, plants and flowers
Class 32: Non-alcoholic beverages, preparations for making beverages, fruit juices, beer
Class 33: Alcoholic beverages, except beer
Class 34: Tobacco products and smokers’ articles, matches, electronic cigarettes
Services
Class 35: Retail services including online retail store, advertising, business consulting, business management
Class 36: Insurance and financial services, real estate services
Class 37: Building construction, repair and maintenance services, installation services
Class 38: Telecommunication services, broadcasting services including video broadcasting
Class 39: Transport, logistics and storage, travel services
Class 40: Treatment of materials, custom assembly, recycling and waste management
Class 41: Education services, including arranging and conducting educational classes and seminars, entertainment services, book publishing, organizing exhibitions and conferences
Class 42: Saas and Paas services (Software as a service and platform as a service), IT services, software development, graphic design services, website development, scientific and technological services
Class 43: Restaurants, cafes, hotels, catering services
Class 44: Medical services, hygienic and beauty care services, dental services, veterinary services
Class 45: Personal and social services, legal services, security services
For a more in-depth discussion read this article: Taking Advantage of the Trademark Classification
Trademark Angel is a trademark registration firm with over 23 years of experience. We handle Canadian, US and International trademark requests.
