Register a Trademark in the European Union
EU trademark registration is very powerful as it covers all 28 countries-members of the European Union. If you are planning to expand in the EU, this is one of the trademarks you must consider. EU is also one of the quickest countries to obtain a trademark registration. If your application is filed using Fast-track system, you can be a proud owner of a trademark registration certificate in 3 months. However, government filing fees are quite high.
Important highlights about the EU registration process:
- Your trademark is only reviewed on absolute grounds meaning it will only be refused if the mark is descriptive or non-distinctive (when a trademark is not capable of functioning as a trademark)
- Just like in the UK, your trademark will not be refused if there is a similar mark
- If you want to prevent a similar trademark from achieving registration, you have to take timely steps and oppose registration of a similar mark
- No use or specimens of use are required to register a trademark in the EU
- Trademark registration process is about 3-4 months if everything goes well.
- Fast-track filing could be used to speed up the registration process.
We work with a few trusted European representatives and associates.
We also recently partnered up with a great German lawyer, so we can now file your trademark in Germany too. German trademarks only take 3-8 weeks!
Pricing of Our Packages
The prices are in USD$ for EU fillings
- Covers filing your application and reporting the progress all the way to registration. 2 classes included. This is our entry-level package.
- Covers full trademark registration, including reporting and responding to non-substantive examiner’s objections and free re-filing.
BELLS AND WHISTLES
- Covers all aspects of trademark registration, including responding to all examiner’s objections and free re-filing. More free extras.
Details about pricing packages
Government fees are not included in our packages and are extra
- Upgrade “SAIL THROUGH” package to “ALL IN” package
- Upgrade “SAIL THROUGH” package to “BELLS AND WHISTLES” package
- Upgrade “ALL IN” package to “BELLS AND WHISTLES” package
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.
To open in a new tab, click: What is “all or nothing” principle in EU trademark registration?
Every trademark application must list the specific goods and services that the trademark will cover.
Products belong to 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)
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
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
To open in a new tab, click: Classification of Goods and Services in a Trademark Application (class headings)
When deciding whether to file for either a word mark or logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.
On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters.
For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.
The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters.
However, filing for a logo can be more advantageous in some situations.
For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.
Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:
Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).
Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk – for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.
In another case, a client wanted to register the mark ESTEEM APPAREL, either the word mark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo instead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.
Since the client protected the logo , he now cannot use Esteem Apparel side by side, without the image, in a different font or in ALL CAPITAL letters: ESTEEM APPAREL. On the other hand, if word mark had been filed – ESTEEM APPAREL, he could have used it in ALL CAPITAL LETTERS, in any font, side by side or one word above the other. Logo makes the trademark inflexible and you should not be making even small changes in your use.
In addition, in some cases, one has to file for a logo if the trademark is broken/separated by images or symbols. Please check our article that talks more about it.
Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.
To open in a new tab, click: Which trademark should I File? Word Mark or Logo?
What is the difference between company name, business name, domain name and brand or trademark?
What are different types of company, domain, business or brand names? Let’s get the names straight to avoid confusion.
- Company name: Legal name of the company, either registered federally or in a certain state (or province in Canada).
Example: Microsoft Corporation
Note: one company may own more than one brand and may do business under more than one name
- Business name or doing business as: Name under which you conduct your business.
- Domain name: Name of your address on the Web.
Example: www.skype.com (Microsoft owns Skype)
- Trademark: A trademark may be one word, a combination of words, or logos (or even sounds and smells!) used to distinguish/differentiate your products or services from those of other entities.
Example: MICROSOFT, , or a combined mark:
Let’s take another example of a giant retailer Kraft Foods.
Company name: Kraft Foods Inc.
12 of Kraft Foods brands are sold worldwide: Cadbury, Jacobs, Kraft, Maxwell House, Milka, Nabisco, Oreo, Oscar Mayer, Philadelphia, Trident and Tang.
For each brand Kraft Foods has a website: cadbury.co.uk; cadbury.com.au; oreo.com; oscarmayer.com, etc.
Not everyone knows that these 12 famous brands are owned by the same giant! It doesn’t really matter, what matters is that everyone knows where do buy their favorite Cadbury chocolate or Oreo cookies and everyone knows how the Oreo cookies package looks like!
To open in a new tab, click: What are different types of names? Company name vs business name vs domain name vs trademark?
Some trademarks cannot be registered on absolute grounds. It’s important that your trademark does not fall in any of the categories below in order to be registrable:
- your trademark does not function as a trademark, i.e. as a source indicator
- your trademark clearly descriptive of goods or services
- your trademark is generic and is merely the name of a product or service
- your trademark is not distinctive, i.e. is not capable of distinguishing your products or services from products or services of other traders
Make sure you watch our video how to select a great trademark.
To open in a new tab, click: What are considered absolute grounds for trademark refusal?
If you simply business incorporate or register a corporate name, it doesn’t mean that the government approved for you to use the name as a trademark.
If we take a US LLC, as an example, every state has its own laws about business names.
You can register your LLC name in Delaware but the business name registration has no impact on the other 49 states.
In plain English, if you register Coolapples LLC in Delaware, another entity may register Coolapples LLC in Indiana. If you plan to expand nationwide or worldwide, trademark registration will provide that protection. A federal US trademark will give you exclusive rights to use your brand name for your products across the US. Likewise, a Canadian or Australian trademark will give you country-wide rights to use your chosen brand in your country and will make it easier for your to sell or license your trademark later.
To open in a new tab, click: Do I need to register a trademark if my business incorporated?
A UK trademark only protects you in the UK, which consists of England, Scotland, Wales and Northern Ireland. There is no protection outside of the UK. A UK trademark is filed in the UK Intellectual Property Office (UKIPO).
A trademark filed in the EU Intellectual Property Office (EUIPO) is called an EU trademark (formerly known as a CTM (Community) trademark).
EU trademark protects you in the 28-member countries of the EU making it a very strong trademark. Current 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, Sweden and the UK.
To open in a new tab, click: What is the difference between a UK and EU trademark?
The opposition procedure can only be started by a party who is the owner or licensee of an earlier trademark. An opposition can be filed against a trademark filed in the EU Intellectual Property Office, or against an international application designating the EU.
To open in a new tab, click: Who can file a trademark opposition in the EU?
Trademarks Office in the EU and the UK will not refuse your trademark if there is a prior filed or previously registered similar trademark.
Instead the Trademarks Office in the EU and the UK only looks at absolute grounds (i.e. if the mark is deception or descriptive, it may be refused).
However, if there is a similar trademark, it will not be refused by the Trademarks Office. Instead, owners of similar trademarks may oppose during the 3-month opposition window in the EU and during the 2 month opposition period in the UK.
One of the main reasons one may file an opposition is confusion with an earlier trademark. Opposition proceedings offer an owner of an earlier trademark the right to oppose the registration of a trademark that could endanger his/her business.
By monitoring the EU Intellectual Property Office database or the UK Intellectual Property Database, you will ensure that you will timely see newly filed EU / UK trademarks and will be in a position to oppose in time. Ask us about the monitoring service.
To open in a new tab, click: Why is it important to monitor newly filed trademarks in the EU and the UK?
In the European Union, cooling off period is set by the Trademarks Office once the opposition has been received and assuming it is admissible.
The purpose of the cooling off period is to allow parties to negotiation a settlement agreement.
An initial cooling off period is 2 months, but can be requested to a maximum of 24 months.
When the cooling-off period has expired and if no agreement has been reached by the parties, the litigation part of the proceedings begins. Most oppositions are settled as it’s cheaper than to proceed with a full-blown opposition.
To open in a new tab, click: What is a cooling off period in a trademark opposition?
Trademark applications can be filed in any EU official language.
A second language, different from the first language, can be chosen from the following: English, French, Spanish, German or Italian.
To open in a new tab, click: In which language can you apply for an EU trademark?
In the EU, no use is required in order to file an application. Just like in the UK, you don’t need to specify any dates of first use or to indicate if the mark is in use. No use is required to obtain a trademark registration.
To maintain your trademark, it must be put to “genuine use in the European Community” within 5 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. Furthermore, Community trademarks that do not meet the new standard for “genuine use in the Community” may be converted to national trademarks of a Member State if they meet the requirements for that Member State.
It’s perfectly legal for you to use your trademark without registration. However, if you are using a trademark that is similar to another name that was adopted before you adopted your trademark, you may be liable for trademark infringement.
To minimize the risk of choosing a trademark that’s similar to another name, you should do a trademark search of the Trademark Office database of the country where you plan to use your brand and of the marketplace (check on Internet for similar names usage).
To open in a new tab, click: Can I use my trademark if it isn’t registered?
In different countries trademark opposition process is different.
In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.
In Canada, one has to file a trademark opposition within a 2-month period.
In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.
In the European Union, a notice of opposition must be filed within 3 months following the publication.
In Australia, the opposition period is 3 months from the date of publication.
To open in a new tab, click: How long is a trademark opposition process?
If you are filing a logo in the European Union, filing in black and white will not allow you to use your logo in any color, unlike the US and Canada. Marks that are registered in black and white but used in color may be vulnerable to cancellation if the owner of the trademark does not prove genuine use of the trademark “as registered”. It means that the logo trademark has to be filed in the color that it will be used (and not in black and white unless the owner plans to use the logo in black and white).
Full rules with detailed questions and answers can be reviewed here: European Common Practice.
If you are thinking of filing a new trademark application, you may want to file two applications: one in black and white to cover all color combinations if you ever need to bring a proceeding before a National Court that has not implemented European Common Practice and one in a particular color that you use to comply with European Common Practice. As us about a special discount for a black and white and color logo (if filed at the same time).
To open in a new tab, click: In what color should you file your logo in the European Union?
It takes a minimum of 8 months to register trademark in the US. If there are office actions (objections from the Trademarks Office), then registration will be delayed. It’s not uncommon for a registration to take a year or longer.
It takes 20 months to register a trademark in Canada. It’s painfully slo-o-ow. Don’t ask us why. We don’t know the answer. We feel your pain though. Hopefully, once Canada joins Madrid protocol things will improve.
You will have to wait for about 7.5 months to register a trademark in Australia.
In the European Union, the registration process is about 6-7 months. Not so bad, but the government fees are very high. If your application is filed using “fast-track” method, then the whole process may take about 4-5 months.
The winner is the United Kingdom, where it takes about 4 months from filing to registration. Added bonus is low government fees.
To open in a new tab, click: How long does it take to register a trademark?
Trademarks can last forever if they are renewed on time. Keep in mind you will have to continue using your trademark to keep it in good standing.
In the US, you must renew your trademark every 10 years. In addition, between the 5th and 6th year after the registration date, you must file an “affidavit of use” to keep the registration alive.
In Canada, a trademark has to be renewed every 15 years (the renewal period will be changed to 10 years soon).
In Australia, European Union and the United Kingdom, you have to renew your trademark every 10 years.
To open in a new tab, click: How long are trademarks valid for?
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- 11 Trademark Tips: how should I list products and services in my trademark application?
- Taking Advantage of the Trademark Classification & the Trademark Class Systems
- Finding the Fast-Track to the Amazon Brand Registry
- Brexit update: implications for EU trademark owners
- Trademarks: First-to-use and First-to-file Countries