A European trade mark is worthwhile for anyone who wants to protect a brand in several EU countries in one procedure – it is faster and often cheaper than registering in individual countries. But it also has risks, notably the possibility of refusal due to conflict in a single country. In this article we explain when it really pays and what to watch out for.
Starting a business and want to protect your new company? We will take care of the trademark registration for you.
A trademark protects the specific goods and services your company offers. However, when you apply, you can indicate not only the list of goods and services you offer at the moment, but also the goods or services you might offer in the near future. For example, you currently manufacture and sell T-shirts, but you could expand your business to include the manufacture of dresses and sweatshirts.
A trademark can take several forms:
The ability of the EU trade mark to distinguish products and services from other similar products and services on the market is very important. As an example, the Apple brand can easily stand as a mark for the sale of stylish electronics. There would be a major problem with registering it for fruit growers specialising in apples.
The moment you have a clear idea of the brand you want to register, you need to check whether it is actually available, in other words, whether a similar phrase, logo or packaging has already been registered and used by someone else.
You can check this in the TMView app, where you can browse many hundreds of millions of registered brands. Fortunately, the app makes it easy to search using a tutorial form.
A common mistake is a poorly chosen range of product and service classes. If you underestimate it, protection may not apply to your business.
We’ll be happy to help you set up your application to protect your future business expansion as well.
Starting a business and want to protect your new business? Or are you already an experienced entrepreneur and need to defend yourself against attacks from competitors? Protect your business that you put a lot of energy into and register a trademark.
One of our clients filed a European trademark application on his own – he had the name and logo ready and relied on the fact that if he couldn’t find a similar mark on Google, everything would be fine. But after a few months, an opposition came from a foreign company with a similar name registered in a different class.
The client contacted us at this stage, when the opposition proceedings were already underway. After analysis, we advised him to modify the scope of protection and at the same time enter into negotiations with the opposing party, which eventually led to an agreement and partial maintenance of the application.
The biggest problem was that the mistake was made right at the beginning – insufficient search and inappropriate choice of product classes. In practice, this is one of the most common mistakes that can make the whole process unnecessarily long and expensive.
If you operate or are planning to operate in several EU member states, then a European trade mark is worthwhile from a procedural and possibly financial point of view. It will protect you against fraud and counterfeiting in all EU member states.
You do not have to go through the procedures of each national authority. At the same time, the cost of applying for an EU trade mark can be lower than the sum of the costs of paying for individual national trade marks. Of course, the number of countries where you want to break through and their national fees are decisive.
The basic fee for filing a single trade mark is €850 for 10 years of protection. The mark is then valid for ten years and can be renewed thereafter, always again for ten years.
Tip: Have you created an interesting product or is your company taking off and becoming well-known? Avoid the situation we have dealt with many times with our clients, where their competitors have started to market a product under the same brand or name. We discuss trademarks granted under Czech law in a separate article.
The EU trade mark agenda is managed by the EUIPO, the European Union Intellectual Property Office, which maintains the register of EU trade marks and registers them.
An application for a European Union trade mark can be filed not only through the EUIPO, i.e. the European Union Intellectual Property Office, but also through the Industrial Property Office of a Member State, which marks the date of filing on the application and transmits it to the European Union Intellectual Property Office within 14 days.
For the filing of the application itself, the applicant is required to pay a fee of CZK 500 to the Office (it is therefore not a fee for the registration of the mark).
You can file an EU trade mark application in this way in any of the official languages of the European Union. It should always be filed in one of the five official languages for intellectual property, which are English, German, Spanish, French or Italian. However, it is sufficient if this language is chosen as a second language.
The application must state:
The fees associated with a European Union trade mark are set out in the scale of fees on the EUIPO website. A summary of the basic fees is set out below:
| Items | Fees |
|---|---|
| basic fee for an application for an individual EU trade mark | 1000 € |
| basic fee for an individual EU trade mark application - electronic filing | 850 € |
| fee for the second class of goods and services for an individual trade mark | 50 € |
| fee for the third and each additional class of goods for an individual EU trade mark | 150 € |
If you find that someone before you has already had a very similar idea for a brand, all is not lost. You can try to contact the person to see if they are actually using the brand and if an agreement can be reached. Otherwise, it’s up to you to rework the brand proposal.
You can risk submitting despite the existence of a similar brand in the market, but this is also the most common reason for rejecting another brand. The EUIPO keeps a very close eye on these facts. If it registers many (or even just two) very similar marks, the protection would be meaningless.
Once an application has been filed, it is first examined by the Office itself, followed by a three-month opposition period for those who believe that their own mark could be confused with yours. If the application is refused, an appeal can be lodged against the decision.
Opposition proceedings are more common than businesses think – they typically take several months and can significantly delay registration.
Filing an application looks simple, but in practice it is often mistaken. That’s why we’re happy to take on the entire process and handle the trademark for you.
Tip: Watch the video in which Ondřej Preuss, founder of Affordable Advocate, talks about brand protection on the internet.
As the owner of the trademark, you have the exclusive right to use it. No one else may use or copy it. You can also use the ® symbol, which represents the registered trademark.
A trademark gives you a guarantee that no one else may use the same or a confusing trademark for the same or similar goods and services without your consent (it is different, however, if a competitor registers the trademark in a completely different class of goods or services). However, if someone were to use your trade mark, you can ask the court to order the withdrawal of their product or service from the market and you will be entitled to compensation for any damages.
The European trade mark is an effective way to protect a brand across the EU with one procedure. It is particularly worthwhile for companies with international ambitions, but it also carries specific risks, notably the “all or nothing” principle. The key to success is good research, getting the classes right and making a strategic decision on whether to opt for European or national protection.
Not directly, but you can file a new EU trade mark application and keep your priority under certain conditions.
Usually 4-6 months if no one objects.
The opposition procedure is followed by an assessment of similarity and likelihood of confusion.
Yes, they are often combined for better protection.
Yes, for example if it has not been used for 5 years.
Starting a business and want to protect your new business? Or are you already an experienced entrepreneur and need to defend yourself against attacks from competitors? Protect your business that you put a lot of energy into and register a trademark.
Ondřej is the attorney who came up with the idea of providing legal services online. He's been earning his living through legal services for more than 10 years. He especially likes to help clients who may have given up hope in solving their legal issues at work, for example with real estate transfers or copyright licenses.
In person and online. Just choose the appropriate service or opt for an independent consultation when you are unsure.
