Trademark registration in the EU: how to do it?

Who Can Register a Trademark?

The registration of a trademark can be made by any natural or legal person. The purpose of a trademark is to distinguish the goods or services of an entrepreneur from those of competitors in the market. A trademark may consist of any signs, in particular words—including surnames—or drawings, letters, digits, colours, the shape of goods or their packaging, or sounds.

Why Is It Worth Registering a Trademark in the European Union?

Registering an EU trademark with the European Union Intellectual Property Office (commonly referred to as EUIPO) grants the owner exclusive rights to that trademark throughout the member states of the EU. In practice, this means the owner can, for example, prohibit any third parties from using the trademark for specified goods and services if such use could mislead consumers. The owner of a registered EU trademark can therefore block the placement of the trademark on goods or packaging by unauthorised entities or the use of the trademark in advertising by such parties.
Registering an EU trademark at EUIPO thus offers entrepreneurs the ability to block unauthorised use of the trademark by entities unlawfully benefiting from the reputation associated with that trademark on the market. This solution is especially attractive as it allows protection across all EU member states, rather than only nationally, as is the case with registration at the Polish Patent Office. This article describes an individual trademark, which serves to distinguish the goods and services of one specific enterprise from those of another. Such an individual trademark may be owned by more than one entity, meaning that more than one party can apply for it at EUIPO.

How to Register a Trademark?

So, how to register a trademark? First, you must check whether you meet the registration requirements. Consider whether the sign intended to be registered as a trademark allows the goods or services of the business to be distinguished from those of other enterprises. It is necessary to establish to which goods/services the trademark will apply. The list of goods/services should be as precise as possible. For this purpose, the Nice Classification divided into 45 classes is used. The selection of classes for the goods/services to be covered by the legal protection provided by the trademark registration affects the registration fees.
Submitting an application electronically facilitates searching the Nice Classification to determine the goods/services to be covered by the trademark protection. Properly specifying the list of goods/services is crucial because after submitting the trademark application, the list cannot be extended. On the other hand, an overly broad definition of goods/services may lead to other parties attempting to challenge the trademark by filing oppositions during the registration process or by requesting cancellation after the trademark is registered.

Therefore, it is advisable to use free online trademark search tools to check whether trademarks for specific goods/services are already registered — i.e., trademarks whose owners could challenge your trademark application because they previously filed an application for the same or a similar trademark for certain goods/services. Such search tools include, for example, eSearch plus and the TMview database.

It is also worth remembering that there are absolute grounds for refusing trademark registration. For example, trademarks cannot be purely descriptive, meaning they consist exclusively of references to: the kind, quality, quantity, purpose, value, geographical origin, or time of production of the goods or the provision of services, or other characteristics or properties. Therefore, you cannot register a word mark such as “coffee” or a word mark like “Podhale.”

It is possible to submit a trademark application to EUIPO using the Fast Track accelerated procedure, provided certain conditions are met, including upfront payment of the registration fee.

After submission, EUIPO examines the application for compliance with formal requirements and the absence of absolute grounds for refusal. If the examination is positive, the application is published, opening a period during which third parties may file oppositions within 3 months if they believe the trademark infringes their rights. Third parties can also submit observations indicating absolute grounds for refusal within this period. If no oppositions or observations are filed, or they are dismissed, the trademark is registered, and the registration is published. The owner of the registered EU trademark may receive a certificate of registration. The EU trademark registration lasts for 10 years from the filing date and can be renewed for further ten-year periods.

Although the EUIPO trademark registration procedure may not seem very complicated, it actually requires thorough analysis, particularly regarding the goods and services to be covered by the trademark and whether the registration infringes the rights of earlier trademark owners. This is all the more important because the application fee is non-refundable if the application is withdrawn or the registration is refused. Assistance in this area can be provided by a commercial law firm.

How Much Does It Cost to Register a Trademark?

Registering a trademark involves certain costs. When submitting a trademark application electronically, the fee for one class is €850. The application covering a second class entails an additional €50 fee, and for each subsequent class, the fee is €150.