How to register an EU trademark?

 

This article provides information on how to register an EU trademark and explains the various steps in the EU trademark registration process.

For information on how to register a Benelux trademark, read our article “Benelux Trademark Registration.”

For more general information on trademarks in the European Union and the Benelux, check out our blog post “10 Frequently Asked Questions about Benelux and EU Trademark Registration.”

 

Registering an EU Trademark in 5 Steps

Research Existing EU Trademarks

Before we start the registration procedure for the European Union trademark, we always check whether identical or similar trademarks have already been registered by other parties, either as a European Union trademark (“EUTM”) or as a national trademark in one of the countries of the European Union.

There are more than 11 million trademarks registered in the European Union. It is possible that a company with an older trademark might oppose your trademark application. Our analysis of the search results focuses on three aspects of the trademark registration: the sign itself (words or logo), the timing of the application/registration, and the chosen goods or services. This research is important to maximize the chances of a successful trademark application and may lead to adjustments in the trademark name, the logo, or the goods/services for which the trademark is being applied.

We also recommend checking whether domain names and social media accounts are still available for the chosen trademark name before starting the trademark application procedure.

 

EU Trademark Registration: Choosing Classes

For each trademark registration, you must choose one or more “classes” of goods or services for which you want to register the trademark. These are categories included in an existing classification system, consisting of 45 different “classes,” each further divided into “subclasses” (the so-called “Nice Classification”).

For example, a company might register the trademark “Lotus” for goods in Class 12 (namely cars), while another company registers it for goods in Class 30 (namely cookies). Both trademarks can coexist without causing confusion among the public.

A wise selection of “classes” and “subclasses” is crucial. This determines whether your trademark will provide effective protection or not. A trademark registered for irrelevant “classes” misses its mark. We often see that a poor choice of “classes” leads to disputes with other companies (e.g., oppositions or court proceedings), which could have been avoided with a better selection of “classes.” We are happy to help you make a good choice. We take the time to understand our clients’ business – and their future plans – in order to make a good selection of “classes” and “subclasses.”

It is often a good strategy not to choose too many classes and subclasses, especially when the trademark research shows that other companies use similar trademarks for similar products or services.

 

Trademark Examination by EUIPO

After submitting your trademark application, the EUIPO (the official trademark office of the European Union) will examine whether the trademark meets all formalities and whether it is not descriptive. A trademark cannot monopolize a certain sign (word or image) if it is merely a description of the goods or services being offered.

After the EUIPO’s examination, the trademark will be published as a trademark application in the 23 official languages of the European Union (note: this is only the application, not yet the registration).

 

Opposition to EU Trademark Applications

From the publication of the European Union trademark application, third parties can take note of the fact that a new trademark application has been filed. They then have three months to file an objection to the application. Such a procedure is called “opposition” or an “opposition procedure.” Oppositions are filed by companies or individuals who have an older trademark right and believe that the new application infringes on their existing trademark. In practice, about 1 in 5 trademark applications face opposition. A thorough research of existing trademarks (step 1) can reduce the risk of a trademark opposition.

The opposition procedure starts with a “cooling-off period” of two months during which the parties can seek an amicable solution to their dispute. This might involve an adjustment to the new trademark application, making additional agreements regarding the use of the new trademark, or withdrawing the application. This period can be extended (up to a maximum of 24 months) if both parties agree.

If the parties cannot reach an amicable agreement, the actual opposition procedure begins. Both parties can then present their arguments in writing, after which the EUIPO will make a decision on the opposition. The EUIPO can dismiss the opposition (allowing the new trademark to be registered) or uphold the opposition (as a result, the new trademark cannot be registered). The EUIPO can also opt for a middle ground, registering the new trademark for some classes/subclasses but not for others.

 

EU Trademark Registration

If no opposition is filed or if the opposition is rejected, the trademark can be officially registered. There will then be an official publication of the trademark, and the applicant will receive a registration certificate.

 

Costs of Registering an EU Trademark

What are the costs of registering an EU trademark?

The basic cost for an EU trademark registration is €850 in registration fees, which must be paid to the European Union Intellectual Property Office (EUIPO). This is the price for one “class” or category of goods or services. For a second class, an additional €50 is charged. From the third class onward, there is an extra cost of €150 per additional class.

In addition to this, there are our fees for preparing, executing, and following up on the trademark application. We always conduct extensive research in advance to check for existing trademarks, to minimize the risk of opposition. We also perform a thorough analysis of the “classes” and “subclasses” relevant to your trademark (these are the categories of goods or services for which the trademark will be registered).

Feel free to contact us for a consultation and more information about our services and costs related to trademarks.