6 Steps to Register a Trademark in the EU

By Josh Gerben, Esq.

A registered trademark is a valuable asset for any brand. Your U.S. trademark, however, only protects you in legal disputes within the United States. To gain legal protection for your mark outside the U.S., you must register your trademark in other countries. Whether your online retail store reaches customers in Italy or your software firm is looking to expand to Paris, you may want to consider trademark registration in the European Union. With 28 member countries, an EU registration is a simple way to start your international trademark plan.

When beginning the process, you have several different options for registration. The first is the Madrid Protocol, which allows you to file a single application, which can then be applied to its more than 90 member countries. If you plan to register in countries outside the EU as well, this may be the best option for you because it will help keep your filing cost down. With this in mind, here are the six steps that are typically required to obtain a trademark registration in the European Union:

How do you Register a Trademark in the EU?

• Conduct a trademark search.
• File your trademark application with the EUIPO.
• EUIPO initiates examination period.
• Publication in the EU Trademark Bulletin.
• A trademark is issued.
• Monitor and renew your trademark.

Step One: Conduct a Trademark Search

Once you’ve chosen a strong trademark, you will begin the process to register your mark with the EU.  The first step in this process is to conduct a comprehensive trademark search.  The reason for this search is to determine whether a similar mark has already been registered in the EU before you begin the task of applying with the EUIPO.  While it can be frustrating to learn that your trademark has already been registered, knowing before you file will save you both time and money, and you’ll have the ability to make some changes to your mark before you file your application.

Free and DIY online searches may seem like a budget-friendly option, but they are not recommended.  These are likely to reveal only exact matches to your trademark.  Most trademark disputes, however, arise, not from exact matches to a mark, but from marks that may provide a likelihood of confusion in the marketplace.  To avoid the potential for application rejection or future infringement, it is best to work with an experienced trademark attorney.

Step Two: File Your Application

Once a comprehensive trademark search has revealed no similar matches, you can proceed with filing your trademark application.  You can do this either on paper or electronically through the EUIPO’s website.  It is typically easier and more cost effective to apply electronically, and it’s the best option for those filing internationally.

The EUIPO also offers a Fast Track option for trademark registration.  On average, Fast Track applications are approved 50% faster than those filed traditionally.  In order to qualify for Fast Track registration, you must first pay upfront.  The examination can only begin once payment has been processed.  You must also select the goods or services for which to register from the EUIPO’s Harmonized database of preselected and approved classes.

Step Three: Examination Period

During the examination period, an EUIPO examiner will review your trademark application.  Around one month after filing your application you will receive notice from the EUIPO, regarding any issues or questions that arose during the examination.  This could be a concern regarding your class choice, wording, or the distinctiveness of the mark.  Once you’ve received this notice, you will have two months to resolve any issues and respond accordingly.  If needed, a two-month extension will be granted while you prepare your response.

Step Four: Publication in the EU Trademark Bulletin

Following the examination period, your trademark will be published in the EU Trademark Bulletin.  During this three month time period, other trademark owners can review your publication.  If they feel that your mark may infringe on their existing trademark, they may file an opposition.  Once an opposition is filed, your application could be delayed or rejected completely.  Opposition procedures may last two years or longer.  The possibility of an opposition being filed against you reinforces the need to complete a trademark search before you file your application.

Step Five: A Trademark is Issued

After the publication period, if no oppositions have been filed, the EUIPO will move to approve your trademark. Around six months after your mark is published in the EU Trademark Bulletin, you will be issued a certificate of registration. As a trademark owner in the EU, you now have legal rights to use your mark in any of its 28 member countries. You can also begin displaying the ® symbol wherever your trademark is visible, including packaging, signage, and websites.

Step Six: Monitor and Renew

The EUIPO grants trademarks, but they do not monitor or police their use.  That responsibility is left to the trademark owner.  In order to maintain exclusivity and control of your trademark, you must monitor its use within the EU, and take legal action as needed.  Often, a cease-and-desist letter is all that is needed to put an infringer on notice, but occasionally, legal action must be taken to stop the unauthorized use of a registered mark.  Many trademark attorneys offer monitoring services and can help navigate legal disputes should they arise.

A trademark registered in the EU is valid for 10 years from the date it is issued.  To maintain your trademark, you must renew the mark with the EUIPO every 10 years.  It is important to note that the EUIPO will not issue a reminder as your renewal date approaches.  The responsibility to begin the renewal process falls on the trademark owner.  Failure to meet renewal deadlines could cause your trademark to be canceled.

Whether you are currently doing business in the European Union, or you plan to do so in the future, it may be wise to consider an EU trademark registration.  With a single application, you’ll gain valuable legal protections in 28 countries.  Begin by conducting a comprehensive trademark search.  Then, file an application with the EUIPO.  Once examination and publication in the EU Trademark Bulletin are completed, you will be issued a trademark that won’t expire—so long as you continue to use the mark and file renewals every 10 years.  Contact a trademark attorney and begin the process to register an EU trademark today.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.