Trademarks are essential for businesses of all sizes. They help to differentiate your products and services from those of competitors and provide legal protection to defend protected names. If you are thinking of registering a trademark in the European Union (EU), this article briefly explains the different steps you need to take.
The first step is to conduct a prior art search. Before filing a trademark, you should conduct a search to ensure that the name or logo you are considering protecting is available. To do this, you need to find out if there are any identical or similar trademarks covering the same or similar goods or services.
This can be done through the EUIPO’s trademark search tool to get an preliminary indication: is there any identical prior art? A more detailed search can be carried out with the assistance of your IP attorney. If the name or logo is available, you can proceed to the next step.
The second step is to fill in the trademark application form. If you are working with a Council, they will do this. This form must include several pieces of information: the name of the trademark or logo, the name of the company that will be the owner of the trademark, its contact details, the list of designated goods and services, etc. Once the form is completed, you will have to pay the applicable fees.
The third step is to wait for the examination process. Once the application has been submitted, it will be subject to a substantive and formal examination. During this process, the EUIPO will examine the application and determine whether the mark meets the necessary requirements (is the sign descriptive of the goods or services concerned? are the goods or services included in the right classes, etc.)?
At the same time, the EUIPO may inform the owners of earlier trademarks of your application if it is considered that there is a likelihood of confusion between the application and the earlier rights. This process can take up to several months. It should be noted that a period of three months is granted by the Office to third parties to file an opposition against the trade mark application.
At the end of the examination process, the trade mark is accepted or refused for registration. In case of acceptance, you will receive a digital registration certificate. This certificate will provide you with proof of the legal status of your trademark in the EU.
Finally, it should be kept in mind that the EU trademark is protected for 10 years and must be renewed at the end of this period. A fee must be paid for this.
These are the steps to register a trade mark in the EU and maintain its protection. The prior art search should not be omitted as it is the best way to ensure that no opposition or invalidity action will be filed against the mark in the future.
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