What are the requirements for a trade mark?
The basic requirement for a registered trade mark is its clear definition; otherwise no one will be sure of what it covers. To be eligible for registration, your trade mark should be different from others and should not describe what you are selling. Your trade mark should not monopolize a mark that simply describes the products and/or services that you offer.
What is a four-tier system for registering trade marks?
It`s a four-tier system for registering trade marks in the EU. Your can choose one of the following options:
– you can protect your trade mark just in one EU Member State (if your business is based there at the moment, or if you want to trade there), then you should file a trade mark application directly at the relevant national intellectual property office.
– you can protect your trade mark in Belgium, the Netherlands and/or Luxembourg, then you should file an application to the Benelux Office of Intellectual Property (BOIP), the only regional-level intellectual property office in the EU, for trade mark protection in those three Member States.
– you can protect your trade mark in more Member States of the EU, then you should apply for an EU trade mark from EUIPO.
– you can use your national, regional or EU trade mark application to expand your protection internationally, to any country that is a signatory of the Madrid Protocol.
What are the benefits of registering a European Union trade mark?
A single registration filed online in one language is valid in all EU member states. The EU trade mark gives you an exclusive right in all current and future EU Member States at a reasonable cost. An online application at EUIPO costs €850 and is filed in just one language. So, you can promote your trade mark in European market – nearly 500 million consumers. It is valid for 10 years.
EUIPO checks and processes your application, and once registered, your trade mark can be renewed indefinitely every 10 years.
What is EUIPO?
The European Union Intellectual Property Office (EUIPO), (known as OHIM until 23 March 2016), is responsible for managing the EU trade mark and the registered Community design. EUIPO also works with the intellectual property offices of the EU Member States and international partners to offer a similar registration experience for trade marks and designs in Europe and in the world. EUIPO can provide you with exclusive rights for trade mark and design protection throughout the European Union (EU) with just a single application.
Besides, they work in partnership with national and regional EU intellectual property offices, user groups, the European Commission, the European Parliament and other international organizations.
What should you know to register your trade mark in the EU?
First,
You have to choose a variant and type of trade mark.
There are 3 kinds of trade mark:
Individual trade mark distinguishes the goods and services of one single company or person from the goods and services of another one. Individual trade mark can belong to one or more legal entities or individuals. It means that there are several applicants. The basic registration fee starts at € 850 (electronic means)
Collective trade mark distinguishes the goods and services of a group of companies or members of an association from the goods and services of competitors. Quite often they are used to identify products with some similar characteristics. Only associations of manufacturers, producers, suppliers of services or traders and legal persons governed by public law, may apply for collective marks. The application fee is EUR 1 500 (electronic means).
Certification trade mark (introduced at EUIPO on 1 October 2017) is a new type of trade mark at EU level. However, it has already existed for many years at national level. This kind of trade mark is used to indicate that goods or services comply with the certification requirements of a certifying institution or organization; it`s a sign of supervised quality. Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified. The application fee is EUR 1 500 (electronic means).
There are the following types of trade mark:
Word mark, whichconsists exclusively of words or letters, numerals, other standard typographic characters or a combination thereof that can be typed.
Figurative mark, which consists of non-standard characters, stylization or layout, or where a graphic feature or a color are used, including marks that consist exclusively of figurative elements.
Figurative mark containing word elements*, whichconsists of a combination of verbal and figurative elements.
Shape mark, whichconsists of, or extends to, a three-dimensional shape. It can include containers, packaging, the product itself or its appearance.
Shape mark containing word elements*.
Position mark, whichperforms a specific way in which the mark is placed or affixed to the product.
Pattern mark, which consists exclusively of a set of elements which are repeated regularly.
Colour (single) mark, whichconsists exclusively of a single colour (without contours).
Colour (combination) mark, whichconsists exclusively of a combination of colours (without contours)
Sound mark, whichconsists exclusively of a sound or a combination of sounds.
Motion mark, which consists of, or extends to, a movement or a change in the position of the elements of a mark.
Multimedia mark, whichconsists of, or extends to, the combination of images and sound.
Hologram mark – a new category of trade mark (since 1 October 2017). It consist of elements with holographic characteristics.
*Note: These trade mark types are not separate categories under the EU trade mark Implementing Regulation. They are however differentiated in the e-filing for practical and technical reasons.
As long as your trade mark falls into one of the trade mark categories adopted by the Office and can be presented in accepted formats, you can file it as an application without graphical presentation.
Second,
You have to choose a trade mark class.
The European Union Intellectual Property Office (EUIPO) has adopted the Nice Classification for classifying goods and services. The Nice Classification divides the goods and services into 45 classes.
Your EUR 850 application fee enables you to choose one class. For an additional fee (EUR 50) you can add a second class, and for three or more classes you will need to pay EUR 150 for each class.
When you apply for a trade mark you can use EUIPO online application forms, the Five-step form or the advanced form. There you can search and browse through the Harmonised Database – a list of goods and services. It contains terms that have already been accepted by EUIPO and by all national IP offices in the European Union and beyond. This database allows EUIPO to process your application more smoothly. Your application could also be accepted for Fast Track – EUIPO’s accelerated procedure to have your application published faster. And you can also use EUIPO “Goods and services builder” to prepare your list before applying, which is recommended for professional practitioners, as sometimes several applications need to be submitted at once.
Third,
You have to check if there`s any similar trade mark.
Fourth,
You have to fill in your data (names, titles, addresses, contacts)
Fifth,
You can confirm and pay.
Good luck!
