Trademark registration in the EU: how to avoid mistakes

Some will say that registering a trademark is very simple. And some - it is impossible. Indeed, the procedure is, on the one hand, very simple: it is enough to file one application for registration and as a result, you will receive a protection document simultaneously in the territory of 27 countries. There is no examination for similarity with other trademarks. It seems that this can then stop you on the way to the certificate. But in fact, there are many such obstacles. Let's consider what can happen to you. Prevent

MY TRADEMARK IS UNIQUE. NO NEED TO CHECK.

Although the EUIPO does not conduct an examination for similarity with already registered and previously filed designations, before filing an application for registration, it is MANDATORY to check your trademark.

Why is this so necessary? The process of registering an EU trademark provides for a period for filing objections. It is 3 months from the date of publication of the application. Accordingly, if you have not made sure that there are no confusingly similar designations in the database, this may lead to receiving not even one, but several objections at the same time. Processing objections is a rather expensive procedure. As a rule, the work of a lawyer is paid on an hourly basis and starts from 150 euros per hour of time spent.

IMPORTANT! We can conduct a check absolutely free of charge INDEPENDENTLY. For this task, you can use the website www.tmdn.org/
To check, you need to add your trademark, select the EU as the geographical region and indicate your classes of goods and services. This information is enough to collect basic information to assess all risks.

YOU NEED TO REGISTER A TRADEMARK FOR A WIDE LIST OF GOODS AND SERVICES

Very often, applicants want to register an EU trademark for 5-10 classes. In fact, applicants work within one or two classes of the CTM, and everything else is for the future. Since it is not necessary to prove use for the registration of an EU trademark, the applicant can file an application for all 45 classes. But in our practice, this has very serious disadvantages.

The fact is that if you apply for 10 classes, you may be “attacked” with objections by the owners of trademarks registered in these 10 classes. Accordingly, if you do not have any evidence of use for most goods and services, it will be extremely difficult to defend your position and overcome objections.

Thus, most often, the desire to apply for more and more classes ends with an increase in the costs of the registration process and complicates the entire process.

Recommendation: declare only those goods and services that are really necessary for your business now, or will be needed in the coming year.

IGNORE OPPONENTS’ “cease and desist letters”

Before receiving a formal objection, opponents often send warning letters. Often, applicants perceive them exclusively negatively and try to ignore them, hoping that the problem will resolve itself.
But in fact, these letters have their positive side. Your opponents have not yet filed a formal objection, they have not paid the appropriate fee for filing such an objection and have contacted you directly. This only demonstrates that they want to understand each other and are ready to seek a compromise together. Even if you do not have a legal education and do not have the budget for professional advice, always reach out and try to understand what they want from you. Very often, by removing certain goods and services from the list, you can resolve the conflict at an early stage and thereby avoid a lengthy and expensive process.

REGISTERED TRADEMARK AND YOU CAN SLEEP IN PEACE

Unfortunately, this is not the case. At the stage when the applicant files an application, he is usually happy about the absence of an examination for similarity in the process of registering an EU trademark. But, of course, there is another side to the coin. When your trademark is already in the register, anyone can apply for a similar trademark and get into the register alongside you. EUIPO will not interfere. The responsibility for protecting your EU trademark actually lies with the owner himself. If you believe that the applied mark conflicts with your trademark, file an objection. If you do not file an objection within 3 months, the competitor's trademark will be registered as your trademark. The degree of similarity does not matter to EUIPO. This is a problem for the intellectual property owner himself.
To avoid getting into such a mess, you can monitor new similar applications through the same system we recommended for searching - www.tmdn.org/

USE OF GENERAL NAMES THAT ARE NOT DISTINCTIVE

It is important to create an original naming. We are often approached with the task of registering trademarks that indicate the quality or content of goods and services: "Natural", " Relevant", "Excellent", "ECO"

The EUIPO office conducts an examination of the compliance of the trademark with the absolute criteria for granting protection. Accordingly, signs that are not distinctive cannot be registered as word trademarks.

Thus, if you have such a designation, you need to file such a trademark only in combination with a graphic element. But we want to assure you right away that it is not enough to fulfill the requirement to add a graphic element purely formally. It must be dominant. Occupy more than 50 percent in the overall composition of the designation. Accordingly, this can save the situation from receiving a refusal to register from EUIPO.

Are there cases when it is still possible to register a word trademark? (which does not have distinctiveness). Only in one case: when the trademark has acquired distinctiveness through use. In our practice, there have been several cases where a company has used such a generic sign for more than 5 years throughout the EU. We have submitted a lot of evidence of this activity. We have proven such use in each country. It worked, but the procedure is quite complicated and depends on the quality of your evidence.

WILL BE USED AFTER 6 YEARS. REGISTRATION AFTER…

Although it is not necessary to prove use to register an EU trademark, after 5 years from the date of registration, your trademark may be at risk if you do not use it. Any person can initiate a request through the EUIPO to confirm use after 5 years. If you ignore or do not provide the relevant materials, this may lead to the cancellation of your EU trademark registration.

We hope you find our advice useful. You can check or apply for your EU trademark by following this link: filing for EU trademark here