6 notes when registering trademark protection in Europe

The European Union (hereafter “EU”), as a major economic bloc and unified political entity, plays a crucial role in today’s global landscape, bringing together 27 Member States. Following the implementation of the EU-Vietnam Free Trade Agreement in 2020, the trademark register procedure has become an essential element for Vietnamese companies wishing to invest in the European market.

This following article will outline provide the process of trademark registration within the EU, outlining the different approaches businesses can take to protect the intellectual property.

1. How to register a trademark in Europe

The basic principles of the EU trademark are currently governed by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the EU trademark. However, the establishment of the EU trademark system did not supersede existing national (French, German etc.) or regional (Benelux) trademarks.

Due to the varied registration needs of individuals, Europe offers various approaches to trademark registration, providing various settings depending on the desired scope of protection.

1.1 . Register directly at EUIPO

The EU trademark is the subject of a single registration with the European Union Intellectual Property Office (hereafter “EUIPO”) based in Alicante, Spain. As such, individuals do not have to fill in separate applications in the different Member States. Therefore, it saves time and money for companies seeking legal protection for their trademark in several EU countries.

The EU trademark has a unitary character, offering its owner protection in all the States of the EU. To secure a place on the EU trademark register, the trademark must meet specific validity conditions in every member state. Any obstacle to registration within a single country, the EU trademark cannot be registered or can lead to the revocation of an existing EU trademark. Conversely, fulfilling all registration criteria grants a trademark registration certificate and comprehensive legal protection across the EU.

1.2 . Register in each EU country

National trademarks can be sufficient if you only want or need to do business in one specific country. You can directly file a trademark application with the relevant national intellectual property office. These applicants fall exclusively under national law. National trademarks cannot be converted into an EU trademark and require new separate application.

However, there is a specific Benelux system if you wish to obtain trademark protection in Belgium, the Netherlands and/or Luxembourg. You can apply directly to the Benelux Office for Intellectual Property (BOIP), which handles trademark applications for these three Member States.

1.3 . Register in one or multiple EU countries through the Madrid system

The Madrid system for the International Registration of Marks is a centralized system administered by the World Intellectual Property Organization (“WIPO”) which simplifies the process of registering trademarks in multiple jurisdictions around the world. This system is regulated by two key legal documents:

• The Madrid Agreement
• The Madrid Protocol.

Vietnam has joined the Madrid Agreement of 1891 and the Madrid Protocol of 1989, so Vietnamese companies can file applications in countries that are party to these two documents.

Step 1

To qualify for the Madrid System, the business needs a registered trademark or pending application in the business location’s country. Noticeably, you can use the Vietnam application to register a trademark in the EU. Noticeably, you can use the Vietnam application to register a trademark in the EU. International trademark applications require in one of the following three languages English, French or Spanish whereas Vietnam specifically requires in both English and French. At this step, you need to specify the countries where you want to register trademark protection.

Step 2

Each country independently examines the trademark for compliance with its national laws. If no objection arises within the time limit, the trademark gains protection in that country. Only the Intellectual Property Office of that country can have the authority to issue a protection certificate.

Upon approval, WIPO registers the trademarks and publishes it in the International Gazette of Trademarks thereby granting protection in all designated member countries.

Step 3

Importantly, trademarks registered through the Madrid system must be renewed every 10 years. Renewal is done through WIPO and covers all designated countries.

Not to mention, the Madrid system can be advantageous for businesses looking to protect their trademarks in multiple countries. It streamlines the application process, which saves time for applicants, and provides a cost-effective means of international protection.

2. Procedures for trademark registration in the EU

It is necessary to conduct a throughout search before filling to ensure that no one else has registered or is using the desired trademark within the EU.

Even so, it is advisable to seek assistance from a professional trademark search service or intellectual property attorney.

The products and services associated with the trademark must be clearly identified.

Trademarks are registered for specific categories of goods and services.

Fees

Then, you can submit your application to the EUIPO. An application at the EUIPO costs €850 for one class of goods and services. A fee €50 is applied for the second class and €150 for the third and subsequent classes. The processing time from application to registration is approximately 7 months.

Language of Presentation

The application may submit applications in any official EU language but must also indicate English, German, French, Italian or Spanish as a second language for potential legal proceedings such as opposition, limitation, or nullity.

The EUIPO examines the applicants upon receipt

This involves assessing the distinctive character of the trademark and its similarity to existing trademarks.

Publication

If the application fulfils all formal requirements, the EUIPO publishes it in the EU Trademark Bulletin. Opposition to the trademark application can be filed by any third party within three months of publication. In case the application is not opposed, the trademark will be registered subsequently.

3. Conditions for trademark registration in the European Union

It is important to note that foreign applicants without a registered address within an EU Member States of the Union must appoint a professional representative or a legal practitioner certified by the EUIPO Office List.

4. Scope of application and terms of trademark protection

It is clearly understood that the scope of trademark application within the Union applies to all EU Members States.

Registered EU trademarks remains valid for 10 years from the application date and may typically be renewable for periods of 10 years indefinitely.

Moreover, it is crucial to note that to maintain its registered status, actively use the trademark within  five years to avoid cancellation.

5. Common documents in trademark registration dossiers in the European Union

In the EU, the common documents required to register a trademark are generally as follows:

• Trademark application form: The applicant includes basic information about the applicant, the trademark itself and the intended registration the goods and services.
• Applicant’s information and notarized legal documents: Name, address, contact information etc.
• Power of attorney: If the application is submitted through a representative or attorney, a power of attorney may be required to authorize them to act on behalf of the applicant.
• Representation of the trademark: Visual representation of the trademark (word mark, logo etc.)
• List of goods and services: A list specifying the goods and/or services associated with the trademark. Additionally, classify trademarks under the Nice Classification system.
• Priority document: Establishing a priority claim may be necessary.
• Fee Payment Confirmation: Proof of payment of the application and any other associated fees.

6. Note on UK Trademark Registration Process

The UK has its own trademark registration system separate from the EUIPO. Nevertheless, trademark registration in the UK follows a similar process to that in European jurisdictions.

Initially, it is crucial to check whether there are existing or similar trademarks before registering a brand in the UK.

It can conduct through using the UK Intellectual Property Office’s (UKIPO) online database or consult with trademark attorney.

Clearly define the specific goods or services associated with the proposed trademark.

Registered trademarks for specific classes of goods and services.

Then, file the trademark application electronically or by post to the UKIPO.

The application will require information such as details of the applicant, representation of the trademark, list of goods and services covered by the trademark, and payment of the application fee.

Examination Period

Following submission, the UKIPO reviews trademark applications. If the trade mark application is approved, it will published in the UK Trade Marks Journal. During this period, such as in the EU, it allows the third parties for potential opposition to the trademark registration if they believe it constitutes an infringement with their existing rights. Third parties may challenge the application during the timeframe. Subsequently, the UKIPO either grants a registration certification or refuses the application based on the outcome of any oppositions, with the registration process taking approximately 4 months if successful.

Fees

Furthermore, trademark registration fees start at £170, varying based on the number of types of goods or services protected.

Geographical scope of trademark protection

Moreover, registering a trademark in the UK only protects it in that territory and the Isle of Man. The islands of Jersey and Guernsey follow different procedures.

Validity

Finally, the registered trademarks have a 10 years validity period and require active use within a 5-year period to maintain registration status.

7. Conclusion

In conclusion, the EUIPO’s main objective is cooperation between the 27 Member States, but also to help businesses by strengthening the global Intellectual Property framework. Applicant’s objective is to secure their trademark protection within EU to safeguard their intellectual property and drive business growth. Subsequent to its withdrawal from the EU, the UK has independently established its own national trademark registration system. Nevertheless, to facilitate a smooth transition for businesses, the UK has aligned its registration procedures closely with those of the EU, offering a streamlined approach for trademark applicants.

Navigating the complex landscape of trademark registration and protection can be daunting due to the intricate regulatory framework. At PLF Law Firm offers specialized legal counsel to protect your Intellectual Property rights. We offer comprehensive legal legal solutions to protect your valuable assets.

Contact PLF Law Firm today via email at inquiry@plf.vn or +84913 902 906 or Zalo | Viber | WhatsApp to receive a free 30-Initial Minute Consultation.

References:

EU Trademark Registration

EU Trademark Regulations