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The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in the European Union.
If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).
In this case, proceeding with two trademark applications has the following advantages:
- Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
- You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
- Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.
If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.
The average time frame for the registration approval is 6 months, if no objections or oppositions arise.
When you register your trademark the European Union, the territorial limit will be the member states of EU.
No, the power of attorney is no longer required.
Yes. The applicant may benefit from using the mark prior to filing by:
- Acquiring distinctiveness of the mark
- Overcoming oppositions based on non-distinctiveness
- Being protected against infringement
Yes. Non-use is a ground for revocation of registration.
Registrable trademarks are those signs that can be interpreted in a graphical manner and can provide distinctiveness to the good or service that it represents. Examples are names, words, sounds, slogans, devices, colours, 3-dimensional shapes, motions, holograms and trade-dress.
The application will first be examined by the trademark authorities with respect to formalities, classification, deceptiveness, clarity, descriptiveness and distinctiveness. If it passes the examination phase, the application details will be published online: the mark itself, applicant’s name and address, date of application, the goods/services involved, priority and seniority claim information, and the trademark’s representation. During the time of publication, opposition is also made available before the mark is officially registered.
Applicants are not allowed to register the following:
- Marks that do not meet the standards of moral and contrary to public order
- Common and broad terms
- Names/flags/symbols of nation/states/international organization
- Marks that lack distinctiveness
Yes. Nice Classification is used in this jurisdiction. If the trademark is used in multiple classes of goods/services, only one application is necessary.
Yes. Community Trademark takes effect in the European Union.
Yes. The date where the application was first filed can be claimed as the filing date in the European Union if the applicant’s home country is a Paris Convention member. The same applies if the applicant’s home country is a World Trade Organization member.
You must use your trademark within 5 years from the date it was registered. It must be used for commerce and transaction must occur in any member states of EU.
Once a trademark is officially registered, it will be initially valid for 10 years. The date of application will be the starting point.
The first renewal must be made 10 years from the date when the application was filed.
It is legal to use your trademark for commerce and trade even if it’s not registered.
The European Union Intellectual Property Office (EUIPO) administers the EU trademark (EUTM). An EUTM is a pending or formal registration of a trademark recognized across the entire EU community rather than acknowledged country by country. The mark holder does not have to reside in a member country to apply for the EUTM.
The countries that support this community registration are in the European Union, namely; Austria, Bulgaria, Belgium, the Czech Republic, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.
EUTMs, like their national counterparts, protect the property rights of their owners. Their administration and processing are less expensive than a national trademark for each member country.
Yes. You have to register your trademark in order to enjoy rights. The “the first to file” rule applies in the European Union.
The national trademark office of the European Union is accessible via this link: https://euipo.europa.eu/ohimportal/es
No. Applicants are not mandated to use the mark or to have intention to use the mark before registration.
The term OHIM stands for "Office for Harmonization in the Internal Market", this term is no longer in use since 23 march, 2016. Today this office is called "European Union Intellectual Property Office" (EUIPO), this is the body in charge of registering Trademarks in the European Union.
The term "EUIPO" stands for “European Union Intellectual Property Office” it was founded in 1994, and is the body responsible for registering trademarks in the European Union.
Yes. Grounds for opposition include:
- Propriety rights
- Corporate and establishment names
- Works of publication
- Domain names
- Violation of rights under Article 8, Article 6septies, and Article 6bis of the Paris Convention
- Marks that indicate geographical location
Owners of a similar trademark which was registered earlier can oppose the registration. Licensees may also oppose the registration.
Yes. Registered trademarks are vulnerable to cancellation due to:
- Violation of propriety rights
- Descriptive marks
- Non-distinctive marks
- Misleading marks
- Functional marks
- Beach of copyright
- Violation of rights under Article 6bis, Article 6ter, Article 6septies, and Article 8 of the Paris Convention
- Geographical indication
- Violation of moral standards and public policy
- Non-use
- Registration in bad faith
Yes. When you register your trademark, you are guaranteed to enjoy several rights namely:
- Exclusive right to use the mark
- Right to object to later conflicting registrations
- Right to demand an action to cancel later conflicting registrations
- Right to take legal action against infringing third parties and the right to obtain damages
- Right to issue license to third parties
- Right to request confiscation of counterfeit goods
Opposition period starts on the date the application was published or one month after the application was published by WIPO of an international organization. The opposition period will end three months after the opposition period has started.
Yes. European Union is a signatory of the Madrid Protocol.
Consult us for information.
Renew your trademark every 10 years.
The first renewal must be made 10 years from the date when the application was filed.
No documentation is necessary.
You have 6 months to renew a trademark that has already expired.