European Union Trademark Introduction
Managing by European Union Intellectual Property Office (EUIPO), applicant has to submit trademark application to EUIPO for examination. Protection is given to all 28 member states of the EU countries and will be extended when new member joins EU.
Trademark protection rule
EU’s trademark law follows the “First-to-file” rule, which indicates that protection will be given to the trademark that is registered earlier vis-a-vis those who come late to file in the same trademark class, even though he/she may have used the mark for a while .
Renewal of registration
Noted that trademark will be removed from registration if applicants do not apply for renewals of registration within a specific period.
European Union Countries
(*List of 28 member states of EU, as at SEPT 2019)
EU Trademark Application Procedure
Application procedure normally takes 3 – 6 months, with 3 months of publication for opposition.
Below is the procedure of applying EU trademark,
EU Trademark FAQ
EU Trademark Application
Q1：What are the requirements if I want to apply EU trademark?
A1： Applicant, as an individual or business entity, meets the application requirement. The Official language for application includes English, French, German, Spanish and Italian.
Q2：What do I need when I apply the trademark?
1. Application form：Should clearly state the basic information of applicants, including but not limited to name, address, nationality etc.
2. Classes of goods and services applied
4. Copies of ID documents (Individual application) / BR certificate (Corporation application)
Q4：Do I need to apply the trademark of each member states of EU even though I have registered EU trademark?
A4：Since EUIPO only conducts formality examination with no substantive examination, disputes may still arise with some similar marks coexisting with your mark in national level. We suggest that corporation should apply for the trademark of EU and nationally in its major and critical market, so as to strengthen the protection towards the brand. Should you have any inquiries about EU trademark application, please feel free to contact our IP consultant anytime.
EU Trademark Objection
Q1：What is trademark objection?
A1： An objection of trademark application after the examination of European Union Intellectual Property Office(EUIPO) on applicant’s trademark
Q2：Why my trademark is objected by EUIPO?
A2：Since EU trademark only conducts formality examination, with no substantive examination, reasons of refusal include (1) High similarity with another registered trademark, (2) Violation of trademark law, (3) Indistinctive characteristics etc.
Q3：What should I do if the trademark is objected by EUIPO?
A3： Applicant should appeal examination to EUIPO within 2 months from the receipt of notification, against a notification of reasons for refusal. Then he/she should submit a written argument with appropriate reasons within 4 months. Should you have any inquiries about appealing examination, please feel free to contact our IP consultant anytime.
Q4：How much for appealing examination?
A4：Appealing fee varies based on the case situation. Should you have any inquiries about appealing examination, please feel free to contact our IP consultant anytime.
EU Trademark Opposition
Q1：What is trademark opposition?
A1： Anyone files an opposition notice to European Union Intellectual Property Office(EUIPO) within the 3-month period beginning on the publication date.
Q3：What should I do if my trademark is opposed by a third party?
A3：Both parties are given 2-months of the “cooling-off” period for negotiation after notification of opposition. If consensus is made during this period, the adversarial part of the proceedings and extra costs afterwards can be prevented. Otherwise, once the adversarial part of the proceedings begins, both parties have to take turns to reply with evidence. Should you have any inquiries about trademark opposition or procedure, please feel free to contact our IP consultant anytime.
Q4：What if I do not submit written argument to EUIPO when my trademark is opposed by a third party?
A4：Applicant will be treated as withdrawal of application if he/she does not submit the materials to EUIPO within specific periods. EUIPO will make the decision of revocation then.
Q5：What is the requirement of opposing a trademark?
A5：Opponent should meet one of the following requirements:
- Applicant or owner of registered trademark
- Trustee of the applicant or owner of registered trademark
Q6：If I failed to object a trademark, can I apply trademark opposition with the same reason again?
A6：Anyone is not allowed to apply the trademark opposition with the same evidence or same reason after the decision is made.