10 Steps to file a trademark in Europe
EU vs. Member States: the convergence program
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European IP Attorney - Lawyer
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Facts about the EU
Before I detail the 10 steps to file a trademark in Europe, and what they entail, it is paramount for us to begin by looking at the importance and weight of Europe in the context of international business. With a population of roughly 511.6 million people, the EU represents a consumer pool larger than the United States, with a Gross Domestic Product (GDP) of $17,277.70 billion meaning that the EU population is liable to have a high purchasing power.
Now, an essential element to be able to sell a product is to file a trademark. In the EU system, two main systems are used: the EU Trademark which acts as one unique title valid for the whole of the EU territory, and the National Trademark system registered at national Offices which allows a business to register a trademark in any EU country. Every year, 695,000 EU trademark applications are registered of which 65% originate from outside the EU and 23% originate from the US. To do so, one could also consider employing the Madrid Protocol (an international system for obtaining trademark protection for a number of countries with only one application1), as well as the Madrid Agreement (which provides a centrally administered system of obtaining a trademark registration in separate jurisdictions).
The 10 Steps
Filing to registration of a trademark in the EU can be boiled down to 10 steps.
Basically, right after the filing of the application there will be an examination period, at the end of which it will be published for opposition. At the end of the process when the mark is finally granted it is once again published as registered and the applicant will receive the certificate of registration.
Let us now look at each of these individually.
Firstly, we have the Pre-filing period during which all the necessary formalities are handled. If you are not an EU resident, you must bear in mind that the filing must be done either by the applicant or by a representative registered within the Office – either the European Trademark (EUIPO) or the National Office.
Second, a sign needs to be chosen. There are obviously lots of different kinds of marks such as words, pattern, shape, color, sound, motion, multimedia, etc…
Thirdly, there is the need to select Good and / or Services (G&S) from a database already predefined by the EUIPO known as the Harmonised Database (HDB) 2. At this point, it is also worth considering employing the FastTrack path, which can reduce by half the time of examination up to the publishing of the application.
Fourthly, is when you start filling out the application form online. You must select the language in which the examination will be performed. With the European Trademark system, one can select 2 out of 5 languages (English, German, Spanish, French, and Italian). Usually, approximately 50% of applicants pick English along with another language.
The sixth, seventh, and eighth steps follow rapidly: the application is filed online, at which point the filing fees need to be paid. Next, the Office will forward the applicant the filing date and application number, shortly followed by the publication of the application in the Official Bulletin.
The following step, which we will call the Examination period, is possibly the most important. Your application will be examined on two grounds: absolute grounds (possesses non-descriptive and distinctive qualities) and formal grounds (broadness or vagueness of your G&P). If there happens to be an objection from the Office or an opposition from third party during this final stage, it will always be an adversarial process. Typically, the applicant will be given time to respond and it is raised arguments during a set period then a decision will be drafted. This sets a response time before the final decision. Usually, around 20% of applications are opposed, but according to OHIM, 80% of these are settled during what is called a ‘cooling-off stage’.
Once all these steps are satisfied and if there is no more objection or opposition, then the tenth step marks the registration of the trademark. The examiner grants registration, publishes it and deliver the certificate of registration. The trademark is valid for 10 years with a required use within the first 5 years of the filing.
Impact of Brexit
One of the most frequently asked questions is what impact Brexit will have on such a procedure.. On March 30, 2019, the EU law will cease to apply in the UK. After withdrawal, UK Courts EUTMS will cease to be protected in the UK, and UK Courts will no longer be competent for handling measures related to the EU or regarding the validity of EU trademarks. However, on November 14, the EU and the UK succeeded in agreeing on a draft withdrawal agreement which recognized the EUTM and EU bodies (laws and courts) until 2021. Disputes on the infringement and the validity of EU trademarks involving EU trademark owners established in the UK will be settled by EU trademark courts. This agreement now needs to be ratified by the UK Parliament.
Conclusion: Key Points
As we have established in this article, many formalities need to be satisfied in order to obtain a registered trademark in the European Union and to bear the fruit of such an attractive market. Only a European Union Trademark (EUTM) will grant you protection and right in the whole UE. Of the 10 steps, the elements that are the most important to remember is that an appropriate system needs to be established before getting a trademark registration. In case a European Trademark is rejected, it is nonetheless possible to register it as a national trademark(s) while keeping the original filing date. Furthermore, one must bear in mind that an opposition to an application is of common practice, and it is unnecessary to give up at that point considering it is highly probable that such oppositions can be settled during the cooling off period. Finally, today, it is vital for any business strategy within the EU to consider the impact of Brexit.