European trademark registration

European trademark registration is one of the most important issues we think about when creating our own company. There is a lot of uncertainty about the name we will use, how it will work in the different markets it will be aimed at, etc. 

In order to carry out all this, one of the essential steps is to proceed with the registration of the trademark at European level. The trademark is a very important factor in the launching strategy of a product, a service or a business model, because it is the main element with which a company identifies itself and is subsequently retained in the consumer’s mind.

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 a European trademark, which is the best way to protect the identity of the product, business model or service throughout the territory of the European Union, and grants its owner, whether natural or legal person, the exclusive right to use the distinctive sign deposited to distinguish the corresponding products and services.

The registration of a European trademark can replace the application for registration of a Spanish trademark. The European Union Trademark (EUTM) system consists of a single registration procedure that grants its owner an exclusive right to use the distinctive sign deposited to distinguish the corresponding goods and services.

The registration of a European trademark can 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 holder an exclusive right in the 27 member states of the European Union.

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

In order to have a unified protection in all member states of the European Union, it is achieved through a single filing and registration procedure that is carried out through the European Intellectual Property Office (EUIPO). And to carry out this process in a safe and efficient way, it is best to do it through lawyers with experience in European trademark registration.

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 trademark and associated goods and services are completed. For this step, it is advisable to rely on European trademark attorneys.
• Examination as to form: the EUIPO carries out an examination as to form, which includes 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. The EUIPO will make a final decision based on the evidence presented. Here, a lawyer experienced in the registration of trademarks before the EUIPO can be of great help.
• Registration and publication of the trademark: if no oppositions are filed or if the applicant prevails in the opposition proceedings, the trademark 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 will 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 trademarks that can be filed in the European Union. The most classic ones are:

• Word marks are those that identify a product or service through a name. They may be formed by letters, numbers or several words, and may 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 marks (using only words) and innominate marks (based only on images). 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 marks from other similar marks in the market.

Other types of trademarks that can be protected through the registration of a European trademark are:

• Sound marks: these consist of the right of protection granted to a melody, sound or other type of sound effect. An example of this type would be the melody of Mercadona in its supermarkets.
• Shape marks: they consist of a peculiar external appearance, format, or make of an image. As an example, we find the apple symbol to identify the Apple brand.
• Position marks: consist of the specific way in which the mark is placed or appears on the product.
• Pattern marks: consist exclusively of a set of elements that are repeated periodically.
• Smell marks: consist of the particular formula that is under a fragrance or scent. For example, the characteristic smell of Abercrombie & Fitch clothing stores.
• Motion marks: consist of or include a movement or change in the position of the elements of a mark.
• Color marks: 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 marks: consists of or includes a combination of images and sound.
• Hologram marks: a new category of mark (as of October 1, 2017). Hologram marks are composed of elements with holographic features.

European trademark registration gives its holder the right to access customs protection, or to request seizure of counterfeit goods. For this process, having lawyers for European trademark filing and registration can be very beneficial.

If you are interested in applying for trademark protection in the European Union, at Letslaw we are European trademark lawyers, contact us! We are here to help you.