2 ways to register your EU trademark

Trademark registration is the very first step of acquiring a valuable intangible asset to your business. Here we put together information about the two ways an entrepreneur can register its EU trademark. We describe each one of them and at the end we give a comparison chart for bigger convenience in choosing the right way for you.

#1. Using trademark attorney:

This is the oldest and safest way to register your mark. Trademark attorneys have a thorough understanding of the trademark process and they also have a good grasp on their client’s business and what they need in respect to trademark protection. Your trademark specialist will advise you specifically about all issues pertaining to your trademark. In particular when choosing this method of registering your EU trademark the trademark attorney shall:

1. Review your trademark design

By doing this the trademark attorney assesses if your design for the trademark may fall short of the legal requirements for registration. If changes are necessary he will advice you and work with you during the redesign process. Important point to remember: the best possible time to obtain the advice of a trademark attorney is when you have your idea about your trademark. Receiving advice at this early stage will save you both money and time considering the efforts you have to take if at a later stage a redesigning is needed because your trademark does not meet the legal requirements for registration.

2. Conduct identical searches

In this step the attorney shall check whether there are registered or filed applications for registration of trademarks identical to your sign in all 27 EU member states. Depending on the result he will provide you with advice if changes of your initial design are necessary and assist you while making them. Again like the point above, if you contact and obtain the advice and services of a trademark attorney as early as possible this could eliminate or reduce the risk of redesigning your trademark at a later stage.

3. Conduct similarities search in all 27 EU member states

Now similarity checking is very different from the identical search. While in the former a check is made whether two signs are identical as a whole in the similarity check identity is looked for the different parts of the two signs that are not identical as a whole. Very often unprofessional search is concluded just for identical signs and not for similar such which brings the risk of opposition against the registration of the sign as a trademark to very high level. Let’s look at the following examples to make it more clarifying. Here are examples of trademarks that are not identical but similar and an opposition procedure was initiated by the holder of the earlier protected sign.

Agin depending of the results your trademark attorney will provide you with advice if changes of your initial design are necessary.

4. Make the choice of classes and draft the list of goods and services

The trademark attorney will work with you to choose the right goods and/or services aligned with your business plan. This is very important as this is how the scope of your protection is defined on the one hand and on the other – increases or reduces the risk of rejection of your application or someone else opposing it. For example, if too many goods or services are included in the list, most of which are not actually in relation to the business your company does or will do in the near future, the risk of opposition against the registration of your mark is very high. On the other hand if the services or goods that you plan to provide in the near future (that’s why a trademark attorney should be familiar with your business plans) are not included you will not have the necessary protection when the moment for launching your products or services comes.

5. File the application at the EUIPO and follow-up of the procedure

After working together all the above steps the trademark attorney takes care of all the administrative and procedural questions on your behalf and you can focus on growing your business. The trademark attorney will draft and prepare all the necessary documentation for the registration of your sign as trademark, conduct all the communication with the office and provide you with updated information for the status of your application. Upon the successful registration of your trademark your specialist will administer and send you the Registration certificate.

6. Monitor your trademark

If you agree on that, because it is a paid service, the trademark attorney will monitor your registered trademark and provide you on time with information if actions to protect it are necessary. Why is this service important? You are the owner of your trademark and as such you have to take the necessary steps to protect it. The trademark law provided that only you and not the office of registration can stop registration of a similar or identical sign like your trademark. In order to be sure that nobody is filing such applications you have to monitor on a regular basis in all 27 EU member states. Luckily trademark attorneys provide such services and can help you with that too.

7. Inform you and keep the confidentiality of all the information you provide

Your trademark attorney will provide and give you information on how to use and protect your trademark after the registration process is completed. After registering your trademark it can be used not only to mark your goods or services. It can be used separately and become a good source of passive income to your business through licensing, franchising ect. monetizing opportunities.

Trademark attorneys are obliged by law to treat all the information they receive as strictly confidential and you don’t need NDA agreement before consulting with such.

#2. Do it yourself

Yes, it is absolutely possible that you can register your European Union trademark yourself as long as you (your company) are resident of one of the EEA member-states. (A list of those can be found here ). If you (or your company) is not a resident of an EEA member-state you have to use the services of an EU trademark attorney as these are the legal rules. Now here are the things you need to do yourself:

1. Check whether your trademark can be represented clearly and objectively

An EU trademark can consist of any signs, in particular words (including personal names), or designs, letters, numerals, colors, the shape of goods, or of the packaging of goods or sounds. As long as your trademark falls into one of the categories of trademarks and can be represented by the accepted formats, you can submit it as an application without having to represent it graphically.

2. Check whether your trademark is distinctive but not descriptive

Your trademark should be distinctive: Consumers should be able to recognize your sign for what it is, for example as an indication of origin. It should distinguish you from other companies in the marketplace so that you can protect and build your brand identity and value. Your trademark should not describe what you produce or sell.

3. Checked whether an identical or a similar mark already exists

You have to do all the things we explained above. There is plenty of information on the internet on how to do it but we strongly recommend using the information on the EUIPO website.

4. Prepare your list of the goods you want to sell and/or the services you want to offer.

For this you need to use the Nice Classification of goods and services. Again check the EUIPO website for more information.

5. Learn how to fill the application

Get familiar with and use the information and tutorials that are available on the internet page of EUIPO like this one here https://euipo.europa.eu/ohimportal/en/easy-filing.

6. Fill out the application form and pay the EUIPO fees

Follow the instructions on the EUIPO site.

7. Respond to all the letters and notification from the EUIPO office on time

Remember in any proceeding there are deadlines which if missed may be fatal for the whole procedure.

8. Monitor your trademark

If you want your rights of protection to be in full force you have to monitor if someone else is trying to register a sign identical or similar like your trademark. If you find such you have to prepare and file opposition against it on time. If you miss the deadline the other identical or similar sign may be registered and coexist with yours.

9. Additionally if you consider using an online platform for registration

There are plenty of platforms providing online services for trademark registration in various terms and price offers. If you wonder whether to use one of those platforms, here are some important notes:

# The lowest price does not mean the cheapest way

Usually the platforms that are offering the lowest possible price for registering your sign do not include any advisory services regarding your registration. If you choose such an opportunity the whole preparation for the registration of your trademark - choosing the goods and services, doing similarity search etc., shall be your responsibility. In those cases the platform actually works like a “mirror” of the EUIPO online services. What is happening is that you do the work the same way you would do it if you register your trademark yourself using EUIPO online services but in this scenario you will pay additional fees to the platform.

# Who is the trademark attorney the platform is working with, if any

Most of the platforms market that in providing their services they use qualified trademarks attorneys but there is no information about who those attorney art, what is their qualification and practice area etc.

# How they keep confidentiality

Check how the platform guarantees the confidentiality of your communication, what are their obligations etc. Before choosing such a platform read and ask more about the terms for the provision of their services.

Summery

We hope our list helps you to make your decision on how to register your EU trademark. As we promised below is the comparison chart that you can use to remind yourself about the benefits and risk of each of the methods we described above. You can also book consultation with a trademark attorney regarding your trademark registration or check out our trademark services.

Comparison chart