As every startupper knows – it is essential to arrange the trademark before starting the business. The feature of trademarks is the fact that they are only protected on the territory where they were registered. Therefore, the big pro of registering a TM in the European Union is that the protection is valid in all member countries. This article will come in handy for those planning to start a business in the EU member states in the right way.
Registration of trademarks in the EU brings benefits
- A company can register an unlimited number of EU trademarks.
- A trademark does not have to be registered anywhere once it is a TM of a European Community.
- The trademarks have unitary and exclusive protection.
- The procedure of registration is the same in all member countries of the EU.
- The costs are reduced and the process is simple.
- The formalities are minimalized, too:
- A single application form
- A single administrative center for registration
- A single confirmation for the right to TM.
What should be registered
It is important to think through how the TM will be used after the registration is complete. It will be helpful for achieving maximum protection. The most secure way is to get a verbal trademark in multiple languages and to obtain separate TM for each language. The original logo needs to be protected as well. In the case when the logo and the name can be separated, it is worth considering registering the parts one by one. If not and the trademark is only used as a whole, then it can be registered as a combination.
The moral is: the more brand options you have, the more difficult it will be to bypass your protection. Still, each case should be viewed independently.
Procedure of registration
Based in Alicante, Spain, the Office for Harmonization in the Internal Market (OHIM) is the organization that receives applications for trademarks. That is why it is common to refer as the “Alicante Treaty” to the documents applying for a Single EU Trademark.
The application itself is supposed to inform about the applicant and their goods or services. Additionally, there is a fee for filing this request.
Based on the application, a formal examination is performed. The regulator exclusively inspects whether the applicant has the right to own the trademark and, also if there are initial reasons for the denial. After the inspection, the applicant gets a search result report.
OHIM does not perform an examination to find the presence of earlier conflicting characters. The results of the search are given to the applicants only for informing them. Anyway, the European Office does not have an entitlement to deny the application for the reason of similar or identical characters found by the search.
The information about the applicant is announced in the European trademarks’ official bulletin.
In certain countries, the search is not to be processed: Benelux, Cyprus, France, Germany, Italy, Estonia, Latvia, Malta, and Slovenia.
The opposition of third parties
According to the EU legislation, third parties can object to the claimed trademark registration in a period of three months starting the date of publication. On the basis of earlier national rights, third parties can request a termination of a published application.
The action of the European Single Trademark can be canceled if not used within five years. Therefore, it is important to ensure that the TM will be used at least in one member-state during this time period. Otherwise, it is meaningless to spend money and efforts for obtaining the trademark in the first place. Using it at minimum one EU state will guarantee that the TM will not be canceled.
Register your TM in the European Union and you will receive all benefits coming with it. COREDO’s law professionals have the needed experience to provide legal support in the field of registration as well as resolving disputes over trademarks.