- 22 February, 2021
- Creado por: Paul Urrutia
- Categoría: How to set up a business in Spain, Legal and tax representation in Spain
More and more companies wish to expand and open new avenues into the European market. One of the first steps that must be taken in order to start trading in Europe is to register the trademark across all European markets through EUIPO. In this post, we explain the steps that must be taken to register with this body.
Registering a brand on a European level provides protection across all 27 countries in the European Union, with any new countries joining the Union at a later date automatically offering trademark protection in accordance with European guidelines.
How to register a European trademark
In order to register a brand within Europe, it is important to make an application to the European Office of Intellectual Property (EUIPO) to undertake the procedure as follows:
- Application. The application can be filed in any one of the three official languages of the European Patent Office – EPO – (English, German or French). English is recommended as the translation will be valid for all the other countries. The application form is divided into three essential parts: a correctly identified owner, a clear representation of the mark and a list of goods and services.
- Examination period. During this time the EUIPO undertakes several actions including: classification, analysis of the formal aspects of the application, absolute grounds for the application are checked (the trademark is analysed to see whether it is distinctive but not descriptive), translation and research. If any errors are found, the EUIPO informs the applicant so that they can be remedied. Sometimes, if it is a simple clarification, the person checking the application may call the applicant over the phone for details.
- Publication and opposition. From the date of publication onwards, third parties who believe the trademark should not be registered have three months to object. If a trademark registration is objected to, the following opposition procedure is opened:
- An opposition is filed with the EUIPO
- The Notice of Opposition is checked to see if it meets requirements and is considered acceptable or not.
- If the Notice of Opposition is accepted, both parties are asked to present arguments and evidence.
- The EUIPO then issues a decision that puts an end to the proceedings.
- Registration and publication of the registered trademark. If nobody files an opposition (or if any oppositions have been resolved in favour of the applicant) then the EUIPO registers the trademark, makes it public free of charge and issues a registration certificate. It is advisable that the applicant downloads this certificate.
Once the brand has been registered, the applicant can use the ® symbol and add the letters MC EU after the trademark. In some countries, it is a criminal offence not to use the symbol once a trademark has been issued.
If you wish to register your trade mark in only some of the European countries, it is better to register the brand locally, in accordance with the national system of each country.
What needs to be done after registering with the EUIPO?
Registering the brand at the European level is only the beginning of the trademark’s lifecycle. The registration is valid for 10 years. During that time period it is important to bear in mind some key factors:
- Renewal. The trademark protection can be renewed indefinitely. Renewals cost 850 euros for one class, 50 euros for the second class and 150 euros for the third and more classes. If you decide not to renew your trademark within the European Union, all the rights you had over that trademark disappear.
- Use. The purpose of your trademark is to distinguish your goods and/ or services from those of your competitors in the market. If you do not use it, third parties can challenge your trademark for non-use.
- Defend. Just because a third party did not challenge your trademark when you were applying for it does not mean that they cannot file observations or challenges afterwards. A procedure begins in which an agreement can be reached or the position of the EUIPO is adopted.
Whatever the case may be, it is important to count on the support of experts in patents and trademarks when registering, renewing or defending a trademark. These experts know the steps that need to be taken and understand the rules.
What are the benefits of registering for a European trademark?
Registering a European trademark via EUIPO has the following advantages:
- With one sole registration, the trademark is valid across the whole of the EU.
- The registration can be done online.
- Registering a European trademark gives the owner exclusive rights that extend across the whole of the EU, solely for the owner to use.
- If new countries were to join the EU, the trademark would be automatically protected in those countries too.
- The trademark is protected for ten years and can be renewed indefinitely over successive ten-year periods.
As explained above, registering a European trademark is essential for protecting your intellectual property rights when you begin to operate in another European country, showing how your products and services differ in the market.