European Application Process
The European Union has a trade mark registration system covering the entire European Union, with a single trade mark registration. Thus if protection for a trade mark is required across several countries of the EU, this is best achieved with an EU registration (sometimes called a Community Trade Mark). This system runs alongside national registration processes.
European registration is achieved via a single application, with a single examination. After registration there is a single ten yearly renewal. As with British registration, there is the possibility for interested third parties to oppose, however the process is different.
I) SEARCH FOR CONFLICTING REGISTRATIONS
A search is particularly important for a new mark. It will reveal any conflicting registered marks, and may indicate that a different mark should be adopted. (Please be aware that a search is not fool proof. There may be established marks which are not registered, but give rise to rights, which may be infringed.)
The application process involves the filing of an application at the European Trade Marks Office (known as EU IPO) in Alicante, giving details of the mark to be registered and the goods and/or services on which the mark is to be used.
An examination is carried out to determine whether the application has complied with the filing formalities, and whether or not the mark is capable of acting as a trade mark i.e. is it distinctive and not descriptive.
If the examiner raises any objections, the applicant is given a period of time in which to present arguments or evidence against these objections.
IV) COMMUNITY SEARCH
The EU IPO also carry out a search of registered European marks and report on any marks that may be considered similar to the mark of the new application. The application is not rejected on the results of the search at this stage, but notification is sent to the proprietors of these registrations.
V) NATIONAL SEARCH (OPTIONAL)
There is also an option for searches to be carried out in most of the national Trade Mark Offices around the European Union, on payment of a small additional fee. Searches are not carried out in France, Germany and Italy. The new application is not rejected on these search results, and notifications are not sent to the proprietors of these registrations.
VI) PUBLICATION, OPPOSITION AND GRANT
The mark is then published and a period of three months is allowed for the proprietors of earlier registrations or rights to oppose the application, if they believe that the use and registration of the mark will affect their rights in their mark. If such an opposition is filed, there is an opportunity to negotiate a settlement with the opponent, and to defend the application.
If no opposition is filed, the application proceeds to grant.
Typical Application European Costs
|Likely Preliminary Advice||£300|
|Application for goods/service in one class||£1,775|
|Application for second class||£50|
|Application for each additional class above the third||£150|
|Optional request for search||£0|
|Reporting on Search||£300|
Since the first of these fees includes substantial official fees, I ask for payment on account please.
Whilst the total cost is considerable, it is significantly cheaper than registration in each of the individual countries and indeed cheaper than a few individual registrations in the major European countries alone.