The process of registering an EU trademark (EUTM), from choosing a name to using the registered trademark, involves several steps:

1. Name Selection and Preliminary Research

  • Brand Creation: The process begins with selecting a distinctive name, logo, or slogan that represents your brand. The chosen mark should be:
    • Unique and not descriptive of the goods or services.
    • Easy to pronounce and remember in all EU languages.
  • Preliminary Search:
    • Conduct a search in the European Union Intellectual Property Office (EUIPO) database (TMview) to ensure the mark is not identical or confusingly similar to existing trademarks.
    • Check for potential conflicts with unregistered marks or domain names.

2. Class Selection and Specification

  • Classification of Goods/Services: Trademarks are registered for specific categories of goods and services using the Nice Classification System. Identify the classes that best represent your business activities.
  • Drafting the Specification: Provide a clear and precise description of the goods or services for which the trademark will be used.

3. Filing the EUTM Application

  • Online Submission: Submit the application online via the EUIPO website. The application must include:
    • Applicant details (individual or company).
    • A representation of the mark (word, figurative, or combined mark).
    • The list of goods and services with their respective classes.
    • Payment of the application fee (starting at €850 for one class, with additional fees for more classes).
  • Languages: Choose a primary and secondary language for the application. The secondary language must be one of the EUIPO’s five official languages (English, French, German, Italian, or Spanish).

4. Examination by EUIPO

  • Formal Examination:
    • The EUIPO checks if the application complies with formal requirements, including proper classification of goods/services and payment of fees.
  • Absolute Grounds Examination:
    • The EUIPO examines whether the mark is inherently registrable (e.g., not descriptive or generic) and distinctive.
  • Publication:
    • If no issues are found, the application is published in the EUTM Bulletin, opening a three-month opposition period.

5. Opposition Period

  • During the opposition period, third parties with earlier rights (e.g., prior trademarks) can file an opposition.
  • If opposition is filed, the EUIPO handles the dispute through a formal opposition procedure. This may involve written arguments and evidence from both parties.
  • If no opposition is filed or if the opposition is resolved in the applicant’s favor, the registration proceeds.

6. Trademark Registration

  • Once the trademark passes the opposition period or any disputes are resolved, the EUIPO registers the mark and issues a Certificate of Registration.
  • The EUTM provides protection in all EU Member States and is valid for 10 years, renewable indefinitely.

7. Using the Registered Trademark

  • Enforcement: Use the trademark on your goods, packaging, website, or marketing materials. Proper use helps maintain the trademark’s validity and strengthens its protection.
  • Monitoring and Protection:
    • Monitor the market and trademark databases to identify potential infringements.
    • Take legal action against infringers if necessary.
  • Renewal: Before the 10-year validity expires, renew the trademark through the EUIPO to maintain protection.

8. Optional Expansions

  • Consider applying for protection in non-EU countries via:
    • National Trademark Applications in specific countries.
    • An International Trademark Registration under the Madrid System, designating additional territories.

By following this procedure, businesses can secure exclusive rights to their brand across the EU, supporting their marketing and legal strategies while ensuring a competitive edge.