Understanding Trademark Registration in the EU

When registering a trademark in the European Union, it is important to consider the needs of your business and the purpose of the trademark. 

Any individual or company can apply for an EU trademark. For those individuals and companies who are based in European Economic Area (EEA) countries (EU Member States and Norway, Iceland, and Liechtenstein) it is not mandatory to use a professional representative. A non-EEA based individual or company must use a professional representative in all proceedings before the EUIPO (apart from mere filing of the application, an application for renewal or application for inspection of files).

For a trademark to be eligible for registration, it has to meet specific criteria, one of them being distinctiveness. As the purpose of a trademark is to signal a recognizable source of goods or services to the customer, only a distinctive-enough trademark can achieve this purpose without consumer confusion. The more generic or descriptive a name, logo, or any other brand elements, the less likely they will be accepted by the trademark EUIPO. You can learn more about registration requirements and the distinctiveness of trademarks by visiting our Trademark Academy.

Another important step in the process of registering a trademark is making sure that it is not too similar to already registered brands. Similarity of marks is only one of two limbs when assessing whether to register the application in case it is opposed. The other is the similarity of goods/services. In other words, there must be a likelihood of confusion with earlier trademarks for the application to be refused on such grounds. Likelihood of confusion is usually given if there is both similarity between trademarks and similarity between goods/services; however, this does not apply without exception in all cases. It follows that regard must be had to particular circumstances in each individual case.

Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the EUIPO or received opposition from their competitors who registered before them. Trademark law strongly prioritizes companies that file trademark applications first, even if the registration process was not yet completed. As a result, the EUIPO in general, recommends searching their trademark filing database prior to starting with the registration.

Your application must contain all the mandatory and basic information required: a request for application, a correctly identified owner, a clear representation of the trademark and a list of goods and services. Payment of the basic fee must also be made within one month of the filing date.

After you send the application, the EUIPO will: 

The examination includes trademark analysis to see whether it is distinctive and not descriptive, as well as formalities such as the signature, languages, owner and/or representative data, priority and/or seniority claims. The goods and services you seek protection for are reviewed to see if they have been correctly classified and their nature has been clearly indicated. If you have used the Harmonised Database for classification, your list of goods and/or services will be accepted automatically.

The EUIPO will carry out a search in the EU trademark database for identical and/or similar marks. The results are sent to the applicant before the trademark application is published. Owners of previously registered trademarks or trademark applications quoted in the report are informed — by letter — about the trademark application. This is called a ‘surveillance letter'. The results of both search reports and surveillance letters are for information only.

In case the application fulfills all formal requirements established by the legislation, the application shall be published in the EU Trademark Bulletin. Within 3 months from said publication the trademark application may be opposed by any third party, typically based on their earlier trademark.

If your application is not opposed within 3 months since the publication, your trademark will be registered subsequently.

For the registration of a EU Trademark, payments must be made at EUIPO: 

Application online: 

€850 for one class of goods and service  €50   for the second class of goods and services  €150 for three or more classes for each class 

Applications using the paper form: 

€1000 for one class of goods and services  for two or more classes same as online application

With the fee calculator for EU Trademarks you can calculate your individual fees yourself.

During the 3 months after the trademark application has been published in the Trademarks Bulletin, owners of previously registered trademarks and entrepreneurs generally have the right to raise opposition against new trademark applications. 

After the examination of the opposition, a notification is sent to both parties to set the time limits for the proceedings. These start with a period during which the parties are encouraged to negotiate an agreement because, if certain conditions are met, the opposition fee will be refunded — this is known as the ‘cooling-off’ period. 

The cooling-off period is set to expire 2 months from the notification of admissibility. If both parties submit a request for an extension before the period expires, it can be extended once by 22 months and can last up to a total of 24 months. The notice of opposition and other documents received are sent together with the notification to the applicant. 

Once the cooling-off period has expired, the adversarial part of the proceedings begins. The opponent is then allowed 2 more months to submit all evidence and observations it considers necessary to make its case. After these 2 months have lapsed, and once the submitted evidence and observations (if any) have been forwarded, the applicant has 2 months to reply to the opposition. If the applicant does not request proof of use but submits evidence and observations, the opponent is given 2 months to comment on the applicant’s submissions and after these exchanges the opposition is normally ready for decision.

In order to file with the opposition it is necessary to pay an official fee of €320 (so-called opposition fee). The losing party will bear all costs of the opposition. The costs awarded do not relate to the professional cost actually incurred by the successful party but are awarded on a scale which is unlikely to exceed €620, if there has been a successful appeal then costs can rise to thousands of euros.

Seeking expert support from an experienced trademark lawyer will certainly give you the help you require to give your business the necessary protection if you’re considering making a move into the EU market. Team Trama is here to support you along the way. Endorsed by 7,400+ brands across the world, trademark one-stop-shop Trama offers an elegant solution to protect the heart & soul of your business!

Need more clarification before you are ready to proceed? No problem at all! Please schedule a free consultation with us and our representative will gladly walk you through the process, addressing any concerns you might have!