Trademark FAQ

It is a graphical sign which intends to distinguish your product from that of your competitors’. Therefore, a trademark is always associated with certain goods and services. Moreover, as it has an essential role both in advertisement and in indicating quality, a trademark is practically the most powerful instrument of a business. Having the capacity of being distinctive is a definite criterion for a successful trademark registration; however novelty is not among the conditions. In case of having a successful registration, the holder is provided the exclusive right to use the mark in the territory of the European Union. An EUTM (formerly: CTM) can be renewed as many times as the applicant wishes without limitation.

The following advantages are provided by trademark:

-it helps to identify the origin of particular products and services;

-it creates an exclusive link between the product/service and its owner;

-it guarantees constant quality for the consumer;

-it constitutes a powerful marketing instrument.

Trademark protection endures exactly for a decade and can be renewed every 10 years. Trademarks are protected in the territory of the particular country or international organization (e.g. European Union) where the registration is applied for.

Any breach of the exclusive rights of a trademark holder constitutes an infringement. Accordingly, the trademark holder is entitled to make a claim against anyone who uses a similar or identical mark in connection with similar or identical goods and services without his authorization. The legal steps to be taken against such persons vary country by country and are determined by state laws. Generally, the following reparations can be requested:

-declaration of infringement,

-an injunction to cease infringement,

-surrender of enrichment,

-compensation for damages.

In most of the countries petition for temporary measures can be filed, if it is done within a specified time period.

A trademark can be cancelled from the register in three cases;

-if the trademark does not comply with the legal requirements for granting

-if it is in conflict with an earlier trademark

-in case the trademark has not been used after the grace period of time.

Invalidation terminates legal protection.

Absolute grounds refer to the incapability of marks to be distinctive or graphically presented. Furthermore, deceptive marks or marks that are against the public order will also be automatically refused. In comparison, the relative grounds for refusal are always in connection with earlier trademarks and their related rights. In spite of the fact that most national offices scrutinise trademarks for similar or identical previous ones, the result of the search is not taken into account at granting (see EU TM opposition).

In many countries trademark holders are provided the opportunity to step up against new trademarks until their registration is finalised. The practice is granted by the authorities so as to make it easier to avoid possible infringements. Each jurisdiction provides a certain period of time, during which the opposition has to be filed. As many difficulties may occur during the process, the assistance of a qualified trademark attorney deemed to be essential.

In most countries foreign applicants are obliged to appoint a local representative who can take care of their case before the national authorities. Nevertheless, in order to avoid unrecoverable mistakes it is strongly recommended to seek professional assistance also in those countries where local representation is not required.

First of all, it is suggested to choose a mark that best fits both the products and the profile of the company in question. Once a mark is chosen it is highly recommended to complete a similarity search in the targeted country as holders of conflicting earlier trademarks may hinder the registration of our trademark.

Any natural person or legal entity that has legal capacity can apply for one. Note, that there are some countries where non-resident entities are required to appoint a local attorney to represent them before the national authorities.

Goods and services are classified into 45 specific classes based on an international agreement. The Nice Agreement is applied in 78 countries involving all European countries.

When filing a registration, it is strongly recommended to prepare the list of goods carefully since the owner is obliged to use the trademark according the list. It is important to note that the more classes are indicated in the application, the more the registration will cost the applicant.

The list of goods contains all those products and services which are covered by the trademark. The list of goods has to be prepared circumspectly as it cannot be amended after filing the trademark application. In order to uphold legal protection, the applicant must start the use of the trademark after a grace period which is generally 5 years.

Trademark registration ensures protection in connection with economic activities. The scope of protection is rather wide as not only identical but also similar marks may lead to infringement. Well-known trademarks enjoy additional special positions in many countries; in this case the protection applies also to those products which are different in nature but it can be assumed that the user of the mark would benefit from the well-known trademark’s reputation.

Clear presentation of the mark, list of goods/services in relation to the intended use, power of attorney are generally required.

Although protection is granted by registration, it is granted with retroactivity to the date of filing. Therefore, the applicant may start to use the mark from the time of filing.

The owner gets the exclusive control over his trademark after the registration is completed. He is also granted legal protection against any other entities using similar or identical marks on similar or identical goods and services without authorisation.

In most of the cases, legal protection derives from the act of registration. However, in some countries trademarks without registration are also given a certain level of legal protection.

A trademark is a symbol used to distinguish the products or services of a company. If registered, the owner will have the exclusive right to use it. In contrast, a domain name is an address that identifies a site on the World Wide Web, and it is not necessarily connected to economic activity. Registration is completed by national and international organisations (e.g.“.de”, “.fr” versus “.com” and “.eu”). A significant difference is that there can be only one domain of the same kind under a top level domain (e.g: .eu), while there may be several similar or even identical trademarks connected to different goods or services.

A patent is a protected invention that is technical in nature, while a trademark is a registered sign attributed to a particular product or service. Both denote a kind of legal protection.

Yes, if a company provides its services under its company name and this is how it intends to distinguish its services from those of its competitors.

The European Union trade mark system consists of one single registration procedure that gives its owner an exclusive right in the 27 Member States of the European Union.

The Office recommends that you verify the website checklist before filling an application for an EU trade mark.

A national trade mark gives protection only in the Member State in which it has been registered, while an EU trade mark gives its owner an exclusive right in all current and future EU Member States.

It is entirely up to the applicants whether they want to obtain national, regional, EU-wide or international registration of their trade mark.

No, there is no legal basis that makes such use compulsory. However, the proprietor of the trade mark may freely choose to use them.

No. The original list of goods and services included in an EU trade mark application cannot be extended, only limited. In other words, you cannot add products or classes to the application originally filed unless you file a new application for the same trade mark comprising the additional classes.

Only minor alterations can be made as long as they do not substantially change the mark.

The Office’s practice on amendments of the mark representation is very strict.

An EU trade mark may consist of any sign, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

-distinguishing the goods or services of one undertaking from those of other undertakings, and

-being represented in a manner that enables the competent authorities and the public to determine the subject matter of protection with clarity and precision.

The representation of the signs must be in a form that uses generally available technology that can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner. Learn more about the file formats accepted by the EUIPO when filing a trade mark. You can also refer to the decision No EX‑17‑6 of the Executive Director of the Office of 22/09/2017 concerning technical specifications for annexes submitted on data carriers.

The European Union trade mark implementing regulation (EUTMIR) lays down specific rules and requirements for the most common types of trade marks.

It is no longer obligatory to add a description to any type of EU trade mark. Descriptions are optional in Article 3 of European Union trade mark implementing regulation (EUTMIR) for position marks, pattern marks, colour marks consisting of a combination of colours and motion marks. For these marks, where the representation is accompanied by a description, that description must accord with the representation and must not extend its scope.

Priority may be claimed of one or more previous trade mark applications, namely a national (or Benelux) application filed in or for a State party to the Paris Convention, a member of the WTO, a State for which the Commission has confirmed reciprocity, or an EU trade mark application.

The ‘convention priority’ right is a right limited in time, which is triggered by the first regular filing of a trade mark. A regular national filing is any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever the subsequent fate may be of the application (Article 4(3) of the Paris Convention). It may be claimed during the 6 months following the first filing.

Priority claims must be filed together with the EU trade mark application or in a separate communication filed on the same date as the EUTM application.

If applicants or proprietors of a European Union trade mark already hold a prior identical national or international trade mark registration with effect in one or several Member States for identical goods and services, they may claim the seniority of that mark in the EU trade mark application, within 2 months of its filing, or any time after registration of the EU trade mark, preserving their prior rights even if they do not renew their earlier mark.

The right of priority has the effect that the date of priority will count as the date of filing of the EU trade mark application for the purposes of establishing which rights take precedence.

Seniority has the sole effect under the EU trade mark regulation that, where the proprietor of the European Union trade mark surrenders the earlier trade mark or allows it to lapse, the proprietor will be deemed to continue to have the same rights as he or she would have had if the earlier trade mark had continued to be registered.

Note that seniority may only be claimed for an earlier registration, not for an earlier application.

It is the date on which the EU trade mark is entered in the Register of European Union trade marks (before giving the go-ahead for publication of the registration in the European Union Trade Marks Bulletin (EUTM Bulletin). On the certificate of registration, this date follows the word ‘Registered’ in the bottom left-hand corner of the first page.

The registration of an EU trade mark will confer on the proprietor exclusive rights therein. The rights conferred by an EU trade mark will prevail against third parties from the date of publication of the registration of the trade mark.