|Trademarks serves for identification of goods and services of an enterprise. At the same time, they are often strong intellectual assets of the enterprise. |
Trademarks must be able to distinguish goods and/or services of an enterprise from those of another enterprise(s). These can be, for example, words, letters, numbers, images, but also colours, holograms, multimedia signs and sounds. Smell or feeling cannot be still registered as EUIPO trademark.
Term of protection for Trademark
A trademark may be renewed indefinitely. However, the trademark will be cancelled if the renewal fee is not paid after a respective ten-year period. Trademark can be also cancelled if the proprietor or licensee does not use the trademark for more then 5 years.
For successful registration, one need to know representation of the trademark (word, logo, sound or video file). Furthermore, the applicant must provide list of goods and/or services for which the protection is sought. The list must be divided into 45 classes according to Nice classification.
Costs of the EUIPO Trademark
For obtaining a date of filing (priority), filing fee must be paid. The filing fee and any additional fee depends on the number of classes indicated. The basic application filing fee is 850 EUR for one class. Class fees of 50 EUR are due for each additional class. Attorney fee starts from 400 EUR. Some trademarks include figurative elements or consist exclusively of images. These are categorised separately in the „Vienna Classification“.
Trademark Search and Availability
Before filing, one should conduct a search for availability. Thus, one avoids potential opposition or invalidation of your trademark.
Trademark searches are also important after the registration. After registration of your trademark, you should regularly carry out searches for new registrations of other trademarks to be able to act against identical or similar trademarks on the basis of your earlier trademark, thus defending your trademark.
Please note that EUIPO does not check any earlier registered or pending application for trademarks. If you own a registered trademark, you should also watch it and defend it.
Search fee for simple word trademark per one class starts from 200 EUR and includes preliminary opinion. Search of any other kind of trademarks depends on case by case basis.
European Trademark proceeding
Complying with formal requirements makes processing faster.
First, EUIPO is checking formality examination that all required data, for example, applicant, trademark and the list of goods and services have been received. However, processing of the trademark application only starts after full payment of fee for the application.
Then, EUIPO examines whether the trademark applied for could be excluded from registration because of absolute grounds for refusal. In particular, all words that merely describe the goods or services (for example, “program” for personal computers) are regarded as a criterion for exclusion, based on which a trademark cannot be registered.
If the application complies with the legal requirements and if there are no grounds for refusal, EUIPO publishes the trademark. Since the date of publication, 3 months period applies for filing an opposition, e.g. based on earlier trademark right(s). Official fee for filing the opposition is 320 EUR. Attorney fee from 600 EUR. If no opposition is filed, trademark is registered.
Trademark Monitoring after Registration
Do you know …
… that the office does not check during the application procedure whether earlier trademarks or rights to signs of third parties conflict with the registration. The trademark might have to be cancelled in the case of opposition or invalidity proceedings based on earlier rights.
Duration of protection and renewal of a Trademark
The duration of protection of a trademark registered ends on the expiry of the day which corresponds in designation or number to the filing day (e.g. application of 17 January 2019 – end of protection on 17 January 2029). You can renew trademark protection for further periods of ten years. The renewal will take effect on the day following the expiry of the duration of protection. For an overall renewal of your trademark it is sufficient to pay the renewal fees.
Keeping your registration alive
Please also note: The renewal fees may be paid six months before the due date at the earliest. If the renewal fees are not paid or if the payment is insufficient, the trademark right will lapse.