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Registration of a trademark in Europe and Italian representative. FAQ

It is very important to register your trademark (word/figurative/3D/colour/sound marks) because it identifies you, your company, your products/services, and it tells customers who you are and what you do/offer. It allows you to be officially recognized in the territory of your interest and, at the same time, protected from others who might think of copying your distinctive mark. It also gives value to your brand. If you would like to register your mark at a European level (EUIPO), which means in all Member States of the EU for ten years, you can file your application online (EUIPO) in about 30 minutes and for a starting cost of € 850. If you are not in the European Economic Area, you will need to appoint a representative. Vademecum Italia can be your representative required to register your trademark at an EU level (EUIPO).


Registration of a trademark in Europe and Italian representative. FAQ

1) What is a trademark in brief?

According to Article 2, Directive 2008/95/EC of the European Parliament and of the Council: “A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

Therefore, it seems quite clear that a trademark is a sign that allows customers to identify your brand/product/service, and, at the same time, to distinguish your brand/product/service from the ones of your competitor/s. A trademark must be a “distinguishing” sign and clearly defined in order to guarantee with certainty what it covers.

For example Big Mac” (Mc Donald’s), “Air Jordan” (Nike), “Windows” (Microsoft), “Testarossa” (Ferrari), “Dom Perignon” (MHCS), etc. are all registered trademarks.

2) Why should I register my trademark?

It is very important to register your trademark at any level (national, regional, European, or worldwide) because it identifies you, your company, your products/services, and it tells customers who you are and what you do/offer. It allows you to be officially recognized worldwide (or wherever you registered your trademark) and, at the same time, protected from others who might think of exploiting your success by copying your distinctive mark. It also gives value to your brand.

3) What are the benefits of registering a trademark?

The benefits of registering a trademark are the following:

  • “Protects your brand value
  • Builds an asset
  • Defends against rival marks
  • Defines your rights
  • Prevents counterfeiting and fraud” n1

4) What kind of protection does a registration of a trademark give?

Trademarks are protected by intellectual property (“IP”) rights. According to Regulation (EU) 2015/2424, article 9 (Rights conferred by an EU trade mark)The registration of an EU trade mark shall confer on the proprietor exclusive rights therein”. In general, the owner of an EU trademark shall be entitled to prevent all third parties not having his consent from using the same sign in the course of trade for the same goods and/or services for which it is registered. n2

5) Where can I register a trademark?

A very useful route to follow when you intend to register a trademark is the “European route”. In fact, if you want or need protection of your trademark at an EU level, which means in all Member States of the EU (currently 28), the only thing that you have to do is apply for an EU trademark (EUTM) from EUIPO (European Union Intellectual Property Office).

6) For how many years is my trademark protected if I register it at EUIPO?

Ten years. The registration of a trademark is valid for 10 years. The term is retroactive, which means that, once the application is approved by EUIPO, the date will be the one of the deposit. After ten years, if you are still interested, you will need to renew the registration.

7) In what States is my trademark protected if I register it at EUIPO?

After the process is regularly completed the trademark is protected in all Member States of the EU (currently 28).

8) How do I register a trademark at an EU level at EUIPO?

The easiest and fastest way is to file, in just one language (you can choose among 23 languages of the EU), an online application at the EUIPO‘s website. You can use the fast track application, or the ordinary application in case you need to provide more specific information. Otherwise, you can download the forms from the EUIPO website and send them via mail, via fax or hand them in at the Office (Avenida de Europa, 4, E-03008, Alicante, Spain). It is not possible to send an application via e-mail.

9) How long does it take to file a trademark registration application?

Filing your registration application through the fast track should take you no more than 15/45 minutes.

10) Can anyone file an application at EUIPO?

In general, yes. Any natural person or company can file a registration request.

However, if you do not have your place of business, a real and effective establishment or your domicile in the European Economic Area, you will need to appoint a representative for all proceedings before the EUIPO. In this sense, we suggest appointing a representative while filing your application. A representative can be a legal practitioner, a professional representative, or an employee of a natural or legal person, provided they meet certain requirements. If you (natural person or company from outside the EU Area) file an application without appointing a representative, the EUIPO will send you a letter requesting the appointment within a specific time limit.

Vademecum Italia can be your Italian representative when registering your trademark at EUIPO. Send a request to assistance@vademecumitalia.com or fill in in the Contact Us form

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11) How much does it cost to file a registration request at EUIPO?

If you apply online (www.euipo.europa.eu), the starting cost is €850 which includes one Nice class (see below). A second class costs € 50 more, while from the third class on you will need to add € 150 for each class. For example, if you want to register your trademark online including two classes you will have to pay € 900 (€ 850+€ 50).

12) What are the means of payment?

You can pay registration fees by credit/debit card, bank transfer or current account (this last one is recommended for professionals). If you would like your application to be examined as soon as possible, you will need to pay the fees immediately.

13) Is there a deadline for paying?

Yes. There is a first one-month deadline that you should respect because in this case the filing date will be the date of receipt of your application. Otherwise, the Office will set a further deadline to let you pay the fee, but the examiners will deal with the application only when the fee has been paid, and the filing date will be the one of the payment. In case you do not pay within the second deadline, the application will be closed by the EUIPO.

14) What are the main elements during a registration process?

Ownership (individual or company)>> the owner’s details are public

What can be an EU trademark >> possible graphical representation and distinctiveness of your trademark

Goods and services >> a complete, accurate, and precise list of the goods and/or services to be covered by the mark (Nice Classification) n3

15) What information is required to fill in the registration form?

You need to fill in a form in which you indicate all the following details: Full name, legal form (in case of a Company), Nationality, Country of registration (in case of a Company), contact information (email, phone, fax) of the applicant/s, reproduction and detailed description of the mark (what you see when you look at the mark), the type of mark (figurative, verbal, etc.), the class/es for which you want to register according to the Nice classification, and other similar information.

16) What can I register as a trademark at EUIPO?

It is possible to register the following:

  1. Word marks;
  2. Figurative marks;
  3. Figurative marks with letters;
  4. 3D marks;
  5. Colour per sé marks;
  6. Sound marks.

17) Is a mark owned by more than one person called “collective mark”?

No. Individual trademarks can be owned by more than one natural or legal person. An EU collective mark is a mark owned by a legal person of public law or by an association of manufacturers, producers, suppliers of services or traders.

18) What is a Nice Classification class?

The Nice Classification consists of a list of 45 classes (1 to 34>>goods; 35 to 45>>services) that classifies goods and services to be protected by your EU trademark. For example, if your company sells engines for land vehicles, you should consider Class 12 which refers to “Vehicles; apparatus for locomotion by land, air or water”;if you have a restaurant you should consider Class 43 which regards “Services for providing food and drink; temporary accommodation”. The above are headings (titles) of two classes, but you should read the explanatory notes to better understand what the class contains. Moreover, when applying, and therefore listing the goods or services you are interested in, we suggest using the exact Nice Classification terms, to avoid confusion.

19) How do I know that I am ready to file a registration request?

With reference to the mark you want to register, before you file your registration you should know:

  1. if it is the correct mark for you and if it fits your IP strategy;
  2. if it can be clearly, objectively, and distinctively represented, but at the same time it is not descriptive;
  3. that it has not been already registered by someone else;
  4.  to which Nice class/es it belongs according to your personal list of goods/services you would like to sell/offer;
  5. if you have and are willing to make public the owner’s details;
  6. if you need a representative.

Please remember that after you file a request, only little modifications can be made, and generally these are restrictive ones.

20) How do I know that I can register my trademark?

Actually, you cannot be certain until you have a response from EUIPO. However, the first thing to do before you proceed with the registration, is to verify if your trademark is “available”, by carrying out a search on the main databases in order to verify if and how others have registered identical or similar trademarks and for what Nice classes. In fact, a request to register a trademark identical to another one already registered or which may cause confusion in the market will not be approved. In order to carry out this search you can use the eSearch plus or the TMview databases, or you can ask a private company to carry out the search on your behalf. EUIPO does not provide this kind of service.

21) What happens after I file my registration application?

The positive outcome of the registration is not automatic and certain. Once you have filed your application, your trademark will be processed by EUIPO to check that it meets the requirements and can actually be registered (otherwise it will be rejected). These are the steps the Office follows to complete the process:

  1. Examination periodEUIPO checks that your trademark application contains the mandatory and basic information required, if there are errors, objections, etc.. It ends with the publication of the application;
  2. Opposition period: after publication, any interested party can file an opposition – generally for “earlier right” or for “absolute ground” – to your request within three months;
  3. Registration: after the two above-mentioned periods are positively concluded, your trademark is finally registered. The registration is published, and a certificate of registration is ready to be downloaded (no paper copies will be issued!).

However, if, for example, you received a negative final decision, you can always file an appeal.

22) Does EUIPO send a registration confirmation?

No. If the outcome is positive, EUIPO will publish your registration, in order to let third parties know that the registered trademark is yours. The Office then issues a certificate of registration, that the owner can download two days after publication.

23) How long does it take for EUIPO to complete the registration process?

After you file an application EUIPO usually needs a few months to complete the process, depending on if you applied with the Fast Track procedure or the regular one. More time will be needed if someone has filed an opposition to your registration request.

24) Is it possible to add a Nice class after the registration process is completed?

No. It is important to choose all the classes, goods and services of interest before you file your request. After you file your request you will only be able to restrict your list of goods/services.

25) Do I get my money back if I withdraw my application or if it is refused by EUIPO?

No. In these cases no refunds are given.

26) Can I use my trademark before it is registered?

Yes. Actually the owner has a right to use its mark whenever he/she wants, with the risk that it is not protected. He/she can also decide to use it and not to register it. However, the use of the mark prior to its registration does not guarantee registration, and sometimes could also be counterproductive.

27) Do I have to use the “”  before the registration process is completed?

No. If you want, you can use it, but actually at a European level there is no specific rule on the matter. It is more used at a national level. For example, in Italy it is very common to use the “” after filing your application and until the registration process is completed (then you will be able to use the  symbol).

28) Do I have to use the symbol to show that my EU trademark is registered?

No, you do not have to. However, many owners, after they obtain registration, prefer to use it.

29) What can I do if someone tries to register a trademark identical/similar to mine?

If someone files a registration application for a trademark that could be identical/similar to yours, within three months from the publication of the application (generally EUIPO notifies other interested parties) you can file an opposition, to which follows a submission of evidence and arguments by the parties. EUIPO will then decide if the opposition has grounds or not. In many cases parties reach an agreement after the opposition is filed. An opposition can be filed by filling in a specific form and paying a €320 fee. We suggest registering with the eSearch plus, because this tool allows users to receive notifications in case potentially conflicting trademark applications are filed at EUIPO.

30) What can I do if someone uses a trademark that is identical/similar to mine?

If someone, without your permission, is using your trademark, or a similar one, or one that can generate confusion between the two marks, you can decide to take action to stop them. Generally, you will notify a request to stop using the trademark and, if you suffered damage, a request for compensation. If the outcome of your request is negative, in the sense that they did not stop or you did not reach an agreement, you will need to decide if you want to start a legal action against the other party. In this case, you will need to prove the correct registration of your trademark and its seniority (earlier registration of the trademark). You can ask EUIPO (inspection of file) for a certified copy of the registration certificate.

31) Can I sell my trademark?

Yes. It is possible to sell or also license a trademark. The first difference is rather obvious because when you sell a trademark you transfer its property.  There are other differences in fees, geographical scope, time, and goods and services, between selling or licensing a mark. Any changes to the ownership should be communicated to EUIPO, by filing a “recordal” (a request that a transfer or license is recorded in the register) online or by fax.

32) Can a trademark be revoked or declared invalid?

Yes. Under some specific circumstances, a trademark can be revoked (from the date of the request), or declared invalid (removes the registration with retroactive effect).

33) What happens ten years after the registration?

After ten years from your registration you can decide to renew your registration, online and at the same costs. When renewing you can only leave it as it is, or restrict/reduce, but not add, the list of goods/services you originally applied for. It is not possible to change your trademark during renewal.

Another choice you have is to convert your EU trademark into a national trademark (IP bridge). Otherwise, you can decide to abandon it with the consequence that the rights associated with your trademark will expire. 

34) Besides the EUIPO where else can I register a trademark?

Depending on the needs of your business, it is possible to register trademarks at different levels: National, Regional, European (see above), and International.

If, for example, you want to protect your business within the borders of your country, you can file a trademark application directly at your national Intellectual Property Office (“national route”). For example in Italy it is the UIBM (Ufficio Italiano Brevetti e Marchi), but you can find a complete list of the competent National Offices here.

Otherwise, it is possibile to file an application at the Benelux Office of Intellectual Property (BOIP), in order to protect a trademark in Belgium, the Netherlands and/or Luxembourg (“regional route”). This is the only case of  regional-level IP office in the EU.

You can consider that one route does not exclude the other and actually they can work in parallel with each other.

 It is also possible to file one application at WIPO (World Intellectual Property Organization) to protect your trademark in any country that is a signatory of the Madrid Protocol, which means in the territories of up to 98 members, including Member States of the EU (“international route”).

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 n1https://euipo.europa.eu/ohimportal.eu

n2 Regulation (EU) 2015/2424, article 9, Rights conferred by an EU trade mark, establishes that:

  1. “The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.
  2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;
(b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.
  1. The following, in particular, may be prohibited under paragraph 2:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under the sign;
(d) using the sign as a trade or company name or part of a trade or company name;
(e) using the sign on business papers and in advertising;
(f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC of the European Parliament and of the Council (13).
  1. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.

The entitlement of the proprietor of an EU trade mark pursuant to the first subparagraph shall lapse if, during the proceedings to determine whether the EU trade mark has been infringed, initiated in accordance with Regulation (EU) No 608/2013 of the European Parliament and of the Council (14) concerning customs enforcement of intellectual property rights, evidence is provided by the declarant or the holder of the goods that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

n3 Among many others, Decision 1154644 of the Office for Harmonization in the Internal Market, Operations Department, clarifies what the EUIPO takes into account when assessing a registration request.

David

David

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