EU Trademark Registration Process

By Josh Gerben, Esq.

As the owner of a U.S. registered trademark, you understand and appreciate the legal protections your trademark provides. Those legal protections, however, only apply to trademark disputes within the United States. In order to gain international trademark protections, you must register your mark outside the U.S., in countries where you are currently doing business, and in those where you plan to do business in the future. Most trademark applications are approved on a country-by-country basis, but registration with the European Union will grant you legal protections in all of its 28 member countries. Here’s how to register your trademark with the EU.

How to Register a Trademark with the EU

• Consider working with an experienced trademark attorney.
• Complete a comprehensive trademark search prior to filing your trademark.
• File your application, either through the Madrid Protocol or directly with the European Union Intellectual Property Office.
• Respond promptly to any Office Actions or Oppositions issued by the trademark examiner.
• Once your trademark has been registered, monitor its use within the EU.
• Renew your trademark registration every 10 years.

Before You Register

If you’ve recently registered your trademark with the USPTO, you know the number of detailed legal decisions that go into the process. From conducting a trademark search to responding to oppositions and office actions, applying for a trademark with the European Union Intellectual Property Office, or EUIPO, can be time consuming as well. Consider working with an experienced trademark attorney from the beginning. This not only streamlines the process and increases your chances of being approved, but it also saves you time so that you can get back to the primary focus of growing your business.

In addition to working with a trademark attorney, you should also conduct a comprehensive trademark search before you apply with the EUIPO. The purpose of this trademark search is to ensure that a similar mark has not already been registered in the European Union. While the EU does not immediately reject marks similar to those that have been registered, this could slow down the process considerably, and, if the original trademark owner decides to file an opposition, your trademark application may eventually be rejected. Knowing of similar trademarks allows you the opportunity to make changes to your mark before you file your application and pay the associated fees. Failing to complete the search could cost you time and money in the long run.

How to Register with the EU

Once you’ve completed a comprehensive trademark search, you can register with the European Union. There are several options to register. The first is the Madrid Protocol, an international treaty which allows you to file a single application, which can then be applied to its more than 90 member countries. If your international trademark plan includes many countries outside the EU as well, this may be the best filing option for you, as it will keep your filing costs down.

If you plan to file directly with the EUIPO, you can do so through the EUIPO’s website or through a paper application. Online applications will save both time and money and are often recommended for international filings. If the goods and services represented by your trademark are found within the EUIPO’s Harmonized database of preselected and approved classes, you may also be eligible for a Fast Track application. On average, these Fast Track applications are filed 50% faster than those filed traditionally, and payment is required up front to begin the examination process.

Once your trademark application is received, it will be assigned an examiner for review. Approximately one month after filing your application, you should receive notice from the EUIPO regarding any questions or concerns that arose during examination. This could include issues with wording, class choice, or the distinctiveness of the mark. Upon receipt of this notice, you will have two months to resolve these issues and respond accordingly. If needed, one two-month extension may be granted while you prepare your response.

The next step is publication in the EU Trademark Bulletin. During the three month time period following publication, other trademark owners can review your publication and determine whether your mark may infringe on their existing mark. If they feel your mark may be an infringement, they can file an opposition, and once this opposition is filed, your application may be delayed or rejected outright. In some cases, it can take up to two years or longer to reconcile an opposition, which reinforces the need to complete a comprehensive trademark search prior to applying with the EUIPO. If no oppositions are filed, the EU will move to approve your trademark.

Trademark Maintenance

Just like their counterparts in the U.S., the EUIPO grants trademarks, but they do not monitor the exclusivity of their use. This is the responsibility of the EU trademark owner. In order to maintain control of your trademark within the European Union, you must monitor its use and review similar marks published in the EU Trademark Bulletin. If you find others using a similar mark, you should consider taking legal action. If the mark is listed in the bulletin, file an opposition with the EUIPO as soon as possible. For marks already in use, another legal action is needed. Often, a cease-and-desist letter is enough to put the offender on notice, but occasionally other measures may be necessary.

An EU registered trademark is valid for 10 years from the date it is issued. To maintain your trademark with the EUIPO, you must renew it every 10 years. The responsibility to renew falls on the trademark owner, and you will receive no warnings or reminders as your renewal date approaches. Be sure to keep track of these renewal dates and begin the process well before the deadline approaches. Failing to meet renewal deadlines could cause your mark to be canceled.

A trademark registration in the European Union will grant you valuable legal protections in all of its 28 member countries. Whether you have customers in France or you manufacture your products in Germany, it may be wise to consider an EU trademark registration. Consider working with a trademark attorney, who will begin by completing a comprehensive trademark search. Next, file your application with the EUIPO, and be sure to respond to any notices and oppositions promptly. Once your trademark has been issued, it won’t expire, so long as you maintain your exclusive use of the mark and renew it every 10 years. Contact a trademark attorney today, and begin the process of securing these valuable protections in the European Union.

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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.