Trademark rights are territorial. When you’re looking to register your distinctive branding elements (be it words, logos, slogans, designs, even shapes, colours, sounds, or smells), you'll need to make sure you register your trademark with the corresponding intellectual property office to guarantee the appropriate protection.
Contrary to popular myth, there is no such thing as a ‘global’ trademark, so you need to consider in which territories you want to protect your mark(s).
One of the most popular territories for UK businesses to register trademarks in Europe. In this article, we discuss how to apply for a trademark in the EU and the considerations you should make before you start the application process.
How do I register a trademark in Europe?
If you decide to protect your trademark in Europe, then the application must be made to the European Intellectual Property Office (EUIPO).
Since the 1st of January 2020 (the date Britain left the EU), applicants for EU trademarks based outside the EEA/EU, including the UK, also require the appointment of a representative from inside the EU/EEA to handle the application process on their behalf.
Is my trademark registrable in the EU?
Before you embark on the application process, you must check that your mark is registrable.
One of the key criteria for trademarks is that they must be distinctive and recognisable and not descriptive of the goods/services provided. Learn more about what can and cannot be registered as a trademark.
Do I need to carry out a trademark clearance search?
It’s vital to conduct a clearance search to check there are no earlier existing registrations for identical or similar marks in a similar field, including international registrations.
This step is crucial - you don’t want to waste money paying filing fees to the trademark office only to find out that there’s an identical or near-identical mark already registered or accidentally adopt someone else’s mark and end up in a trademark war.
The TMview database is an excellent place to search for other EU trademarks, and our experienced trademark lawyers can also run detailed searches on your behalf previous to your EUTM application.
What are the classes of European trademarks?
To register a European trademark, you need to classify the goods and services for your trademark by breaking them down and listing them under whichever of the NICE classes are appropriate and align with your business model.
It’s always worth getting a trademark specialist involved in this step to help you navigate the complexities of the different classes.
The last thing you want is to end up with a mismatch between what you have protection for and what you need protection for, making your trade mark worthless.
Also, if no classification issues are found during the examination, your application will be processed more quickly.
What’s the cost of registering a trademark in Europe?
The basic fee to apply for, renew, oppose, cancel, or appeal can be found on the official EUIPO website. The fees can change, so it is always best to check the website when planning your application budget.
How long does it take to register a European Trademark?
Once the European Union application has been filed and examined (and the filing fees paid to the EUIPO), it will be published for three months after the filing date before it is added to the register.
That allows others to oppose your application. If no oppositions are logged, the mark should proceed to the register a few weeks later. Once you’ve got your registered EU trademark, it is valid for 10 years but can be renewed indefinitely and potentially last forever.
Does a UK Trademark cover Europe?
Unfortunately, no. Therefore, if you need EU-wide and UK protection, you must register your trademarks in both territories (UK and EU) separately. You can apply for a UK trademark at the Intellectual Property Office (IPO).
So if you are wondering if a European trademark can be used in the UK? The answer is only if you have made a UK Trademark application at the IPO.
What if I only want to register a trademark in one European country?
If you only trade with one EU country, you may find it quicker and cheaper to register your trademark in that country.
It’s best to work with an experienced trademark solicitor who can take care of the application process and understands the country’s language and bureaucracy.
Regarding the latter, this could save you enormous amounts of time, not to mention stress.
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Having the correct IP protection in place will help safeguard your assets as you expand into new territories and regions. Registering a trademark in Europe is a great first step into expansion. However, you need to follow the right process to avoid an application rejection.
If you require support with registering a trademark or you would like to find out more about the different types of territorial protection you can apply for, book a free 15 minute consultation or call us on 020 3808 8314.