Trademark protection “Europe” (European Union): Union Trademark / EU Trademark application (EUTM) for a fixed price / trademark registration

According to Article 4 of the European Union Trademark Regulation (EUTMR) an EU trade mark may consist of any signs, in particular words (→ word mark), including personal names, or designs (→ device mark / figurative mark), letters, numerals, colours (→ color mark), the shape of goods or of the packaging of goods (→ 3D mark), or sounds (→ sound mark), 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.

According to Article 7 (1) e) EUTMR, European trademark law excludes from registration as an EU trademark signs which consist exclusively of the shape, or another characteristic, which results from the nature of the goods themselves (→ design protection), the shape, or another characteristic, of goods which is necessary to obtain a technical result (→ patent protection or utility model protection) or the shape, or another characteristic, which gives substantial value to the goods. So if you only want protection of a technical invention or the visual appearance, a patent or utility model or a design / design patent / industrial design is the right intellectual property right / IP right.

Furthermore, trademark protection in the European Union is also excluded, for example, for signs which are devoid of a distinctive character, which are contrary to public policy or to accepted principles of morality, or for trade marks which consist exclusively of signs or indications which may serve in trades to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services.

The filing of an EU trademark has to be done at the European Union Intellectual Property Office (EUIPO) and is examined there. If the trademark registration is successful, this trademark gives protection in all member states of the European Union. The costs of such an “European trademark” are significantly lower than separate applications filed in individual European countries. In addition, only one joint application and examination is necessary, which saves contact with national trademark offices and the involvement of Trademark Attorneys / IP Lawyers in the individual countries (if necessary).

A registered Union trademark has a uniform effect for the entire European Union. If successfully registered, an “EU trademark” gives protection in all (currently) 27 member states of the European Union. Trademark protection therefore exists in the following European countries: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.

Costs for an EU trademark are higher than a German trademark, but its scope of protection is disproportionately greater than that of a German (only) trademark and covers all member states of the European Union. So if you do not operate in Germany alone and need the trademark not only there, but also in other European countries such as Austria, the Czech Republic, France, Italy, Belgium, Poland or the Netherlands etc., an European Union trademark is often recommendable and a very interesting offer.

The costs of a trademark registration at the EU level depend on the scope of services required. They consist of the official fees of the European Trademark Office / European Union Intellectual Property Office (EUIPO) in Alicante as well as our fee if we are allowed to assist you. The official fee for filing a trademark application in the EU for the first class is 850 € for an electronic application. For the second class there is an additional fee of 50 € and for each additional class from the third class onwards there is an additional fee of 150 € each.

Overview of official fees for trademark applications in the European Union:

Basically, you can also apply for an EU trademark on your own – if you have an address in the European Union. However, if you plan to do so, it is highly advisable that you know exactly the requirements and conditions of the trademark law. Applications without professional assistance often fail because of easily avoidable mistakes or they lead to great difficulties for the applicant later on.

Also for an EU trademark application, the details matter. For example, applications filed by “laymen” often claim a too narrow or too broad scope of protection and do not protect what is actually intended to be protected. In addition, there are also various absolute grounds for refusal, which can trigger objections / provisional refusals and ultimately also lead to rejections by the European Union Intellectual Property Office (EUIPO). Even with professional support such an objection cannot be ruled out completely, but a specialized Trademark Attorney can often identify problem areas in advance and suggest possible alternatives.

Unfortunately, official fees paid to the European Union Intellectual Property Office (EUIPO) are not refunded if the EU trade mark application is unsuccessful. This fee is retained by the Trademark Office because of the processing of the application up to the point of rejection, including the examination for possible grounds for refusal.

After a trademark application or trademark registration, the trademark form of an EU trademark can not be changed. It is possible to restrict or specify the list of goods and services after the registration, but it is not possible to extend the trademark protection – for example to new classes or new offers or to change the trademark itself. For this purpose, a new Union trademark / EU trade mark would have to be applied for.

No, the trademark law of the European Union does not require a check for prior rights of third parties. The European Union Intellectual Property Office (EUIPO) will publish a trademark without checking for conflicting older rights. However, this can lead to difficulties with these trademark owners – such as oppositions and sometimes expensive warning letters („Abmahnungen“). The offered “availability search” for identical or similar signs can reduce the risk of conflicts and provide an overview of existing third-party trademarks.

Procedure of a trademark registration in the European Union (if we may support you):

➔ Order & payment ➔ summary & draft (search if necessary) ➔ filing / application and forwarding of official fees after your confirmation ➔ examination of the “European Trademark Office” / European Union Intellectual Property Office (EUIPO) (formerly: Office for Harmonization in the Internal Market – OHIM) for formal requirements as well as possible absolute grounds for refusal ➔

• ➔ if problems ➔ provisional refusal with setting of a time limit to remedy the objection by submitting a statement to the Trademark Office ➔ if this is successful, examination will be continued // if not successful, then rejected and possibility to take action against it
• ➔ if no problems ➔ publication of the trademark registration and start of an opposition period of 3 months ➔ registration of the trademark and forwarding of the electronic trademark certificate

(Duration from application to registration of the trademark at the EUIPO ideally around 4 months after the application date – in case of a fast track application it may be a bit faster.)

The “fast track procedure” for EU trademark applications is applicable when only checked, accepted and already classified terms are used in the list of goods and services according to the Nice Classification. Such a “fast track application” saves the European Trademark Office to examine these terms and they are accepted in any case, which can significantly shorten the processing time. However, for individual, novel or special offers, it is often advisable to file an application outside this accelerated application procedure to best cover the offers.

After the registration of the EU trademark you may advertise, for example, with the well-known symbol ® (“R in a circle”) or the sign ™ for Trademark in the European Union for the offers (goods and services) protected by the sign. An indication such as “Trademark protection in the European Union”, “EU trademark” or similar would also be permissible for this purpose, as long as the trademark exists.

A registered European Union trademark / EU trademark is protected for ten years (calculated from the filing date), provided that no prior cancellation has taken place.

After the initial protection period of ten years has ended, the trademark can be renewed at the European Union Intellectual Property Office for an additional ten years as often as desired.

An EU trademark must be used seriously and to the extent registered, otherwise it may be cancelled. However, there is also a so-called grace period for use in the European Union. This means that the owner of the EU trademark has five years after expiration of the opposition period or registration of the trademark to seriously use the trademark himself or through third parties (for example through licenses).