Out-Law Guide | 30 Mar 2005 | 2:25 pm | 3 min. read
This guide was last updated in December 2017. It is based on a law that applies across the European Union called the EU Trade Mark Regulation.
Scope of the European Union Trade Mark right
The EUTM System runs parallel to the trade mark legislation of each national EU member state. All rights in an EUTM Registration date back to the date of filing and not when the application is actually granted.
The 28 member states of the European Union
Information required to file an application
Procedure and time scale
Allow around 8 or 10 months from the start of the process to the issue of a Registration Certificate. The following are the main steps in that process:
Step 1: You can conduct a search to determine if the mark is free to use and register to minimise conflicts with earlier third-party rights (although this is optional).
Step 2: File your application, either on paper or electronically. It is cheaper to file the application electronically. There is also the option of using the EUIPO's Fast Track application process, which can be 50% faster than a regular application. A EUTM qualifies for the Fast Track service if the list of goods and services is selected from the EUIPO's Harmonised database, which contains pre-validated and pre-translated terms and payment is at the time of application.
Step 3: If you file the application electronically, a filing receipt will be produced as part of the filing process, where you will be given the official filing date and number. If you file the application on paper, the filing receipt will be issued in a few weeks.
Step 4: Within around one month of the filing you will receive comments from the EUIPO on the formalities examination. This will raise any specific queries that the EUIPO may have for example, regarding your class choices, wording of the specification and objections to the distinctiveness of the mark (i.e. is the mark a term other traders need to use to describe their goods and services). If objections are raised,you will have two months to remedy any deficiencies and reply. You may ask for an initial two month extension of time to prepare your response. The first extension will normally be granted automatically but the second will need to be justified..
Step 5: If you requested it at the time of filing (or within a month of an international application being transmitted to the EUIPO) national search reports can be conducted for a fee. The fee is EUR 12 per participating office. Since 1 January 2014, six national offices have been taking part in this optional search system and perform searches in their national registers: the Czech Republic, Denmark, Lithuania, Hungary, Romania and Slovakia. You can also request an EU database search for identical and/or similar marks. The results are sent to you before an application is published and owners of previously registered trade marks or trade mark applications quoted in the report are informed about your trade mark application by a "surveillance letter".
Step 6: If your application passes the examination stage, it will be published in Part A of the EU Trade Marks Bulletin. This is an opportunity for other brand owners to file their objections. If they do so, the application may fall completely or be delayed. If a formal opposition is filed, opposition procedures can last for two years or more. Many brand owners hire watching services that, like a search engine, will automatically search every published application for potential conflicts. The application is open to opposition for three months from the date of advertisement, the opposition period can not be extended.
Step 7: If there are no oppositions, the EUIPO will issue you or your trade mark attorney a certificate of registration around 6 months after the publication date. Previously a registration fee was payable at this stage, but this was abolished on the 1st May 2009. There are widespread examples of purported invoices for registration fees being issued by third parties unconnected to the EUIPO or your trade mark attorney, ignore these fee requests and do not pay them.