Trademark Registration in the EU

Trademarks are used to identify a particular brand or manufacturer via registered signs such as a word mark, figurative mark, a combination of the two, a shape mark which may or may not contain a word element, and a position mark amongst many others. These function as means of identification by which a product, goods, or services, are distinguished from other traders.

What is a Trademark?

A Trademark can be any sign or a combination of signs, word/s including slogans, symbols, logos, or devices which help identify your brand from that of other traders. A Trademark has to be classified under one, or more, of the 45 Nice classes which are listed under the Nice Classification adopted by the European Union Intellectual Property Office (EUIPO), which can be categorised as Goods or Services.

EU Trademarks are regulated by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trademark, further built upon by the EU Trademark delegated regulation (EU) 2018/625 and the European Union Trademark implementing regulation (EU) 2018/626.

EU Trademark Registration

A European Union Trademark (EUTM) is any Trademark which is pending registration or has been registered in the European Union as a whole with the European Union Intellectual Property Office (EUIPO).

The advantages of a European Trademark Registration

For an Intellectual Property owner doing business in Europe, an EUTM registration is a cost-effective way to obtain Trademark protection. A EUTM provides protection by means of a single registration covering the whole of the European Union.

Trademark rights can be enforced in any one of the twenty-seven (27) Member States. Registration of a EUTM is granted by the European Union Intellectual Property Office (EUIPO) located in Alicante, Spain.

There are considerable economic advantages to registering a EUTM: amongst these are lower registration and renewal costs, and lower costs for Trademark administration. One Trademark registration in Europe covers the territory of 27 Member States.

A EUTM has a validity period of ten (10) years from the date of filing and shall be renewable for additional ten (10) year periods upon application for renewal.

What can and cannot be protected under the EU Trademark Regime

Trademark registration in the EU covers all those signs which are either designs, letters, numerals, colours, the shape or packaging of goods or sounds as long as they are distinguishable from other enterprises.

The following list of marks may be protected:

• Hologram marks
• Multimedia marks
• Motion marks
• Sound marks
• Colour combination marks
• Single colour marks
• Pattern marks
• Position marks
• Word marks
• Figurative marks
• Figurative marks containing word elements
• Shape marks
• Shape marks containing word elements

These can be filed as either individual marks, collective marks, or certification marks.

An individual mark distinguishes the goods and services of one particular company from those of another, as defined by EUIPO. An individual mark can be owned by one or more natural or legal persons (which would all need to apply for registration simultaneously).

Collective marks distinguish the goods and services of a group of companies or members of an association from those of competitors and can be used to build the confidence of consumers in a collective mark. Only associations of manufacturers, producers, suppliers of services or traders, as well as legal persons governed by public law, may apply for collective marks.

Certification marks are a sign of supervised quality used to indicate that goods or services comply with the certification requirements of a certifying institution or organisation. Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.

The European Trademark application process

Prior to filing for the registration of a European Trademark, one would need to first conduct searches over existing Trademarks to be certain that the one to be registered does not clash with pre-existing ones. When assisting clients with such searches, we would provide them with a similarity report.

Once the necessary searches have been conducted we would then assist clients with filing the trademark application, for which we would require, inter alia, the following information:

1. Identification of the first language, second language required;
2. An understanding of the type of Trademark required;
3. The Nice Classes desired;
4. An indication as to whether a former application was made in the 6 months prior and, if so, whether it is a trademark at national or international level;
5. The Applicant’s details.

Once we file the application form, the EUIPO would review the Trademark and will inform us as representatives of the applicant as to whether the trademark may be published for opposition.

If all is in order, the Trademark will be provisionally approved and published in the EU Trademark Bulletin where third parties will be able to assess whether it may be too similar to their own and file a notice of opposition.

Should no third-party file opposition orders, the Trademark will be approved by the EUIPO and the applicant will receive a registration certificate; proving the exclusive legal rights to the filed Trademark throughout the EU.

How long does it take to obtain an EU Trademark?

The timing differs according to multiple factors. If no delays are incurred and all files are in good order, then the process generally takes no longer than six (6) months.

The timing of the application may be stretched due to the filings of notices of opposition – these delay the process of registering a Trademark in Europe, though estimating by how long is not possible as these tend to differ from application to application.

What are the estimated costs involved?

The cost of filing an application for the registration of a Trademark in the EU can range anywhere between €850 and €1,800 depending on what type of Trademark is being filed for registration, if any copies of the documents provided need to be copied, whether any alteration to the Trademark must be made, and the number of Nice Classes selected.

For an overview of all fees invovled, please reach out to our consultants at [email protected] where one of our experts will be able to assist you further.

Third-party opposition and the right for an appeal

When filing for an EU Trademark registration, one must note that third-parties are entitled to file a notice of opposition within three (3) months from the publishing of the provisionally approved Trademark on the EU Trademark Bulletin. Here at CSB we may also assist clients with filing notices of opposition against pending trademark applications.

Anyone who is adversely affected by a decision has the right to appeal, and we may also assist and provide expert legal advice in relation to any such appeal. The cost for appealing a mark-related decision is €720.

An appeal must be made within 2 months from the initial contested decision, and the relative fee paid within the same timeframe.

We would assist clients wishing to file an appeal, with the preparation of a statement of grounds in order to clearly state on what grounds the appeal is being made. The timeframe for this is of four (4) months from the first notification of the contested decision.

Once a decision is drafted and deliberated by the Board, this will then be notified to the parties involved. Such decision may be subject to an appeal, within two months from the notification of the decision, before the General Court. Furthermore, all judgments of the General Court may be appealed to the Court of Justice of the European Union.

How long does a European Trademark last for?

A Trademark registered in Europe is covered for a total of ten (10) years from the date of application.

During these ten years, it is the owner’s responsibility to ensure that the registered Trademark is enforced by confirming that the Trademark is correctly registered for the goods and services it trades in, and by being vigilant and taking action against other parties in case they use the registered Trademark without permission.

Though a European Trademark has a registration validity of ten years, it can be renewed indefinitely for 10 years at a time. An owner of a registered Trademark in the European Union will receive written notice by the EUIPO that the registered Trademark’s validity is about to expire.

How can CSB Group help you?

CSB Group’s setup is geared to handle all areas of Intellectual Property, be it Trademarks, Patents and Designs or Copyright; locally, European-Union wide and internationally. We are engaged by our clients at all levels to assist with providing them suitable solutions in the protection of their Intellectual Property assets.

CSB Group assists clients with searches, applications, and registrations of Trademarks within the Intellectual Property Office of Malta, the European Union Intellectual Property Office (EUIPO), and the World Intellectual Property Office (WIPO). We also assist with any opposition and appeal proceedings that clients may face or otherwise any withdrawals, restrictions, transfers, amendments, or alterations that proprietors may wish to make to their Trademark registrations. Should proprietors wish to subject a Trademark to a right in rem or have a Trademark levied in execution, we may assist and guide them with respect to the said process from start to finish.

You may reach out to us at [email protected] where one of our consultants will assist you further, offering bespoke solutions backed by experience and knowledge of the sector with a distinctive Human Touch.