FAQ & Tips

According the EU Regulation n. 1001/2017 on the European Union Trademark (EUTM) is “…any signs, 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 on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. The EUIPO (European Union Intellectual Property Office) is the official EU authority in charge of the management and examination of trademark registrations and application.

OUR TIP

Take a look at EUIPO’s website, before going ahead with your trademark registration application. Inside this website is available a wide range of information according the EUTM milestones, especially what could be a trademark, trademark examples and so on. Inside EUIPO’s website it’s possible to have access to laws, cases, tools and whatever is related to trademarks, especially a free tool called TM-view with a database of all trademarks already registered, applied, refused or expired into the European Union and each single EU Country Member.

According the EU Regulation n. 1001/2017 on the European Union Trademark (EUTM) the registration of an EU trade mark shall confer on the proprietor exclusive rights of use on the registered sign. This roughly means that the proprietor of a registered EUTM shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where“the sign is identical with, or similar to, the EUTM and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EUTM is registered, if there exists a likelihood of confusion on the part of the public” The following, among the others, may be prohibited: affixing the similar/identical sign to the goods or to the packaging of those goods; offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder; importing or exporting the goods under the sign; using the sign as a trade or company name or part of a trade or company name; using the sign on business papers and in advertising, etc.

OUR TIP

No registration means no business…at least most of the times. So always register your trademark at EUIPO, before starting the development of your business in the European Union and into the web. A preliminary and comprehensive trademark search is always highly recommended, in order to avoid opposition claims coming from third parties and especially any fraud, infringement and brand hijacking attempts.

According EU Regulation there is a wide range of signs able to be considered trademarks, such as words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds. Sometimes also signs not eligible for the registration are allowed to be registered (for example a too much descriptive sign) thanks to a wide, recognizable (for the public) and spreaded use of the sign itself. There are dozen of cases of trademarks not able on a first instance, to be registered, but then registered thanks to a wide use in the European Union (e.g. “Booking”, “Trip Advisor”, etc.)

OUR TIP

Always try to register your trademark before the implementation of your business. Put ASAP under use your trademark and get records of its use. Take a look at the other trademarks, using the web and all the available EUIPO’s tools, such as TM-view (to search third parties’ earlier registered trademarks) and eSearch+ (to see directly into EUIPO’s register what has already been registered).

There are normally three things to consider before applying for the registration of a trademark: - the sign to be registered (letters/words, logos, 3D shapes, colors, positions, sounds, etc.); - the products or services to be associated with the sign (products/services, how many, what is included and not included? etc.); - the territories where the trademark need to be protected (in case of the EUTM this choice is pretty obvious and its focused only on European Union). Not all signs are eligible for the registration. There are absolute and relative grounds that could address your trademark to be refused by EUIPO’s examiners. The EU Reg. n. 1001/2017 states about grounds for refusal at articles nn. 7-8. Products and services must be mandatorily indicated using an international classification called “Nice Classification” (look at point 8 of FAQ) that is made of 45 classes (34 of products and 11 of services).

OUR TIP

Take always in mind that a sign, to be accepted as a trademark, must be distinctive and should give to the consumer a sort of indication of origin to be linked with the products/services associated to the trademark. So never choose signs to much descriptive (e.g. “shoe” for a trademark of shoes). Never use signs which have become customary in the current language (e.g. “bikini” for a swimwear trademark). Then, very important, never use signs identical or similar to earlier registered trademarks of third parties, which cover identical or similar products/services. This kind of identities/similarities (sign+products/services) could lead the consumer to a likelihood of confusion and to the refusal of the application. Finally a trademark must be in compliance with the law and the public order principles. So never use signs contrary to public policy or to accepted principles of morality.

The registration of a trademark at EUIPO lasts ten years from the date of its filing in front of the Office. In many non-EU countries such as China Mainland and Russia the ten year period of registration starts not from the filing date, but from the day when the registration is granted by the Trademark Office. EUIPO provides also a sort of “grace period” of six months after the expiration, to allow trademarks proprietors to renew their registrations paying a small extra-fee.

OUR TIP

Never forget the day when your trademark has been filed (also called “first deposit date”, “filing date”). This date is important not only as a reference for the ten years expiration. Indeed after the filing date you have a six months period (called “priority period”) to extend the trademark registration in another country (outside European Union) claiming to be protected in the meanwhile from third parties ongoing applications. It’s an international protection recognized from all Countries, in order to protect the exclusive rights of use guaranteed to the owners of trademark registration applications.

The European Union Trademark is a unique registered trademark able to provide an exclusive right of use and a proper protection in each of the 27 Countries members of the European Union (Austria, Belgium, Bulgaria Cipro, Croatia, Czeck Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxemburg, Malta, Netherland, Poland, Portugal, Romania, Slovackia, Slovenia, Spain, Sweden). After Brexit the United Kingdom is no more a member of EU and of EUIPO, so, to have protection in UK for your trademark, you need to register it there too.

OUR TIP

Even if your business is currently based in few countries of the European Union, the registration of the trademark at EUIPO could represent a cost-effective action in terms of costs (taxes, consulting services, etc.) if compared with separated registration/s in a single country or in a couple-countries members. So don’t have usefulness doubts, don’t waste time and invest a reasonable sum in the registration of your trademark inside all the European Union even if your business is located only in one or few EU countries.

The choice of the products and services is strategic and necessary in order to decide “if” and “how” protect your trademark. But it is very important in order to manage your budget too, because each class of products and services needs an additional cost together with an additional protection. This is a key point, because once the trademark application has been filed is no more changeable. So if you would like to add products/services placed in classes not inserted in your original application, then you should file a new application with further costs. The more classes you claim for, the higher is the enforcement and the amount of the taxes you need to pay: e.g. one class at EUIPO has a basic cost of 850€, the second class needs only additional 50€, but each class after the third requests a fee of 150€. For a comprehensive summary of the EUIPO’s taxes you can take a look at EUIPO’s website. Each applicant is free to choose how to fill in the list of products/services and the number of classes. It’s possible to select the items from an approved EUIPO/WIPO’s list or to freely indicate using personal definition of specific products/services. One of the main tasks of EUIPO’s examiners is just to double-check whether or not a product/service indication is admissible and the right correspondence with the type of class inserted into the application.

OUR TIP

A trademark registration lasts ten years. So it’s important to have a wide vision of all the products/services the applicant would like to protect with its trademark. To do this is important to have an open approach, selecting not only the current products/services covered by the trademark at the moment of the application filing date, but the whole applicant’s business in general, looking at all the potential products/services that could be developed in a medium-long term period such as ten years. To speed up the examination of the trademark application EUIPO provides also a “Fast-Track” procedure. The applicant can have a faster examination selecting already approved products/services from specific lists. OUR TIP?! Even if your business is currently based in few countries of the European Union, the registration of the trademark at EUIPO could represent a cost-effective action in terms of costs (taxes, consulting services, etc.) if compared with separated registration/s in a single country or in a couple-countries members. So don’t have usefulness doubts, don’t waste time and invest a reasonable sum in the registration of your trademark inside all the European Union even if your business is located only in one or few EU countries.

All products and services must be mandatorily indicated and categorized using an international classification called “Nice Classification” that is made of 45 classes (34 classes of products and 11 of services). There are hundreds thousands products/services that could be associated to a trademark application and the list is continuously changing and growing (now is available the 11th edition). Each class has a heading, with a general indication of the products/services available in each single class. The headings are very important to be used as a reference to understand whether or not a class should be selected by the trademark owner. Actually many products and services could be placed in different classes, due to the type of use, the raw materials used in manufacturing, etc.. Some examples? Fashion items such as “clothes and footwear” are both placed in class 25, whereas “bags” despite are for sure fashion items are placed in class 18, together with “leather and imitation leather articles” because normally bags are made of leather/imitation leather. “Wine and spirits” are placed in class 33 together with a wide list of alcoholic beverages, instead “beers” are inserted together with mineral water, soft drinks and not-alcoholic beverages in class 32.

OUR TIP

For classes’ selection is always suggested to use the tools and search engines provided by EUIPO and WIPO (World Intellectual Property Office) including the explanatory notes in case you should have any kind of doubt about the placement of your products/services. Each applicant is free to choose how to fill in the list of products/services and the number of classes. It’s possible to select the items from an approved EUIPO/WIPO’s list or to freely indicate using personal definition of specific products/services. One of the main tasks of EUIPO’s examiners is just to double-check whether or not a product/service indication is admissible and the right correspondence with the type of class inserted into the application. OUR TIP?! A trademark registration lasts ten years. So it’s important to have a wide vision of all the products/services the applicant would like to protect with its trademark. To do this is important to have an open approach, selecting not only the current products/services covered by the trademark at the moment of the application filing date, but the whole applicant’s business in general, looking at all the potential products/services that could be developed in a medium-long term period such as ten years. To speed up the examination of the trademark application EUIPO provides also a “Fast-Track” procedure. The applicant can have a faster examination selecting already approved products/services from specific lists. OUR TIP?! Even if your business is currently based in few countries of the European Union, the registration of the trademark at EUIPO could represent a cost-effective action in terms of costs (taxes, consulting services, etc.) if compared with separated registration/s in a single country or in a couple-countries members. So don’t have usefulness doubts, don’t waste time and invest a reasonable sum in the registration of your trademark inside all the European Union even if your business is located only in one or few EU countries.

If you are a non-EU trademark professional, or if you are an experienced user of trademark procedures, maybe you already know what you want to register at EUIPO, in terms of sign and classes of products/services. You need only an EUIPO’s certified trademark attorney to be represented in front of EUIPO. In this case the user has only to provide us a complete and ready-made list of the trademark features to be registered (e.g. a jpeg of the sign in case of a logo or the word indication in case of a letter trademark, an explanatory description is always appreciated) and of the applicant data (name and surname in case of a physical person or the name of the company, type of company in case of juridical person, then address, nationality, etc.). The purpose of the “self-service” registration is to save time and money from both sides (from the user’s one and from our side as professionals in charge of the filing)

OUR TIP

If the applicant has already filed or register its trademark outside the European Union (or in a single EU Country) the easiest, simplest and fastest way is to provide us a ready-made pdf of the non-EU application. We will take it and “copy-paste” immediately at EUIPO. OUR TIP?! For classes’ selection is always suggested to use the tools and search engines provided by EUIPO and WIPO (World Intellectual Property Office) including the explanatory notes in case you should have any kind of doubt about the placement of your products/services. Each applicant is free to choose how to fill in the list of products/services and the number of classes. It’s possible to select the items from an approved EUIPO/WIPO’s list or to freely indicate using personal definition of specific products/services. One of the main tasks of EUIPO’s examiners is just to double-check whether or not a product/service indication is admissible and the right correspondence with the type of class inserted into the application. OUR TIP?! A trademark registration lasts ten years. So it’s important to have a wide vision of all the products/services the applicant would like to protect with its trademark. To do this is important to have an open approach, selecting not only the current products/services covered by the trademark at the moment of the application filing date, but the whole applicant’s business in general, looking at all the potential products/services that could be developed in a medium-long term period such as ten years. To speed up the examination of the trademark application EUIPO provides also a “Fast-Track” procedure. The applicant can have a faster examination selecting already approved products/services from specific lists. OUR TIP?! Even if your business is currently based in few countries of the European Union, the registration of the trademark at EUIPO could represent a cost-effective action in terms of costs (taxes, consulting services, etc.) if compared with separated registration/s in a single country or in a couple-countries members. So don’t have usefulness doubts, don’t waste time and invest a reasonable sum in the registration of your trademark inside all the European Union even if your business is located only in one or few EU countries.

If you don’t have experience of trademarks registration or need some explanations about your idea of trademark, maybe is better to be assisted step-by-step from a trademark professional, who can lead the user in the right choice of each single feature of the trademark to be registered. In this case the first step is to describe in the best way what’s the sign the user wants to register and in general the business behind the trademark (the website under use, the products/services already in the market, the potential products/services for the future, etc.). Our crew will implement a preliminary trademark search and will try to point out, together with the client, a final list of products/services classes.

OUR TIP

The more information we have, the more the preliminary preparation of the trademark application will be useful to find out the final and best version of your trademark. OUR TIP?! If the applicant has already filed or register its trademark outside the European Union (or in a single EU Country) the easiest, simplest and fastest way is to provide us a ready-made pdf of the non-EU application. We will take it and “copy-paste” immediately at EUIPO. OUR TIP?! For classes’ selection is always suggested to use the tools and search engines provided by EUIPO and WIPO (World Intellectual Property Office) including the explanatory notes in case you should have any kind of doubt about the placement of your products/services. Each applicant is free to choose how to fill in the list of products/services and the number of classes. It’s possible to select the items from an approved EUIPO/WIPO’s list or to freely indicate using personal definition of specific products/services. One of the main tasks of EUIPO’s examiners is just to double-check whether or not a product/service indication is admissible and the right correspondence with the type of class inserted into the application. OUR TIP?! A trademark registration lasts ten years. So it’s important to have a wide vision of all the products/services the applicant would like to protect with its trademark. To do this is important to have an open approach, selecting not only the current products/services covered by the trademark at the moment of the application filing date, but the whole applicant’s business in general, looking at all the potential products/services that could be developed in a medium-long term period such as ten years. To speed up the examination of the trademark application EUIPO provides also a “Fast-Track” procedure. The applicant can have a faster examination selecting already approved products/services from specific lists. OUR TIP?! Even if your business is currently based in few countries of the European Union, the registration of the trademark at EUIPO could represent a cost-effective action in terms of costs (taxes, consulting services, etc.) if compared with separated registration/s in a single country or in a couple-countries members. So don’t have usefulness doubts, don’t waste time and invest a reasonable sum in the registration of your trademark inside all the European Union even if your business is located only in one or few EU countries.