Registration of an European Trademark

One of the most important things we think about when creating our own company is the name we will use, how it will work… In order to carry out all this
one of the essential steps is the registration of the name that we are going to give to our project. Although there is the registration of trademarks in Spain that provides the holder with the legal protection of its trademark at national level, we can go much further by obtaining that legal protection at European level.

To do so, we can register an European trademark, which is the best way to protect the identity of the product, business model or service in the whole territory of the European Union.

The trademark is a very important factor within the launching strategy of a product, a service or a business model, because it is the main element with which a company is identified and subsequently retained in the consumer’s mind.

Trademark registration grants the owner of a trademark, whether a natural or legal person, the exclusive right to use the registered distinctive sign to distinguish the corresponding products and services.

The registration of an European trademark may replace the application for registration of a Spanish trademark. The European Union Trade mark (EUTM) system consists of a single registration procedure that grants its owner an exclusive right in the 27 member states of the European Union.

What do I have to do to register an European trademark?

In order to have an unified protection in all member states of the European Union, it is achieved through a single filing and registration procedure through the European Intellectual Property Office (EUIPO).

The EUIPO is the European Union (EU) agency in charge of managing EU trademarks and EU designs, European and international cooperation in the field of intellectual property (IP), as well as the European Observatory on Infringements of Intellectual Property Rights..

Its unitary nature is reflected in that the European trademark is registered and can then be transferred, limited in its classification or cancelled with effects throughout the EU.

The process to register a European trademark has several steps:

• Application: the application is filed in one of the three official languages of the EUIPO (English, German or French) and the details of ownership, description of the mark and associated goods and services are completed.
• Examination as to form: The EUIPO carries out a formal examination including classification of the mark, analysis of formal aspects, absolute grounds, translation and search. If any errors are detected, the applicant is notified to correct them.
• Publication and opposition period: Once the application is approved, it is published in the EUIPO Trademark Bulletin. During a period of three months, third parties may file oppositions to the registration of the trademark.
• Opposition process: If an opposition is filed, a process is followed in which arguments and evidence are presented by the applicant and the opponent.
  Registration and publication of the mark: If no oppositions are filed or if the applicant prevails in the opposition process, the mark is registered and published free of charge. A certificate of registration is issued and the holder may use the ® symbol next to the mark.

Processing, grant and duration

The European Union trademark has a duration of ten years from the filing date of the European trademark registration and may be renewed indefinitely for equal periods of ten years. The protection granted starts from the filing date of the trademark

After filing, the trademark is examined and then published in the European Trademark Bulletin. From the date of publication, three months elapse within which interested third parties may file an opposition to the registration of the trademark.

If this period elapses without opposition, the trademark will be registered by the European Intellectual Property Office (EUIPO) based in Alicante.

What types of trademarks can I register?

There are different types of elements that can be registered as an international trademark, the most classic ones are:

• Word marks are those that identify a product or service through a name. They can be formed by letters, numbers or several words, and can include orthographic signs. Some examples of word marks are NIKE, ZARA and LEVI’S, which consist of logos formed by letters in a single color and typography.
• Figurative marks combine visual elements, such as images, figures or drawings, with letters, words or numbers. They are a mixture of nominative (using only words) and innominate (based only on images) marks. An example of a mixed trademark is Sanborns or Lacoste, where a representative text is combined with an image or drawing, which gives them a unique and distinctive meaning. This combination facilitates the differentiation of these brands from other similar brands in the market

Other types of trademarks

• Sound mark, which consists of the right of protection granted to a melody, a sound or other type of sound effect. An example of this type would be the melody of Mercadona in its supermarkets.
• Trademark of Form, which consists of the peculiar outward appearance, format, or make of an image. As an example, we find the apple symbol to identify the Apple brand.
• Position Mark, which consists of the specific way in which the mark is placed or appears on the product.
• Pattern Mark, which consists exclusively of a set of elements that are repeated periodically.
• Olfactory Mark, which consists of the particular formula that is under a flagrance or odor. For example, the characteristic smell of Abercrombie & Fitch clothing stores.
• Motion Mark, which consists of or includes a movement or a change in the position of the elements of a mark.
• Color, which consists of the color itself characteristic for a category of goods or services. An example of this type of mark would be the color of Coca Cola which would be red or Twitter which would be blue
• Multimedia, which consists of or includes a combination of images and sound.
• Hologram, a new category of branding (as of October 1, 2017). Hologram marks are composed of elements with holographic features.

Both the European trademark application and the European trademark registration grant its holder the right to access customs protection, or to request the seizure of counterfeit goods.

For more information about European trademark registration, at Letslaw by RSM we are specialized trademark lawyers, contact us!