Some important details about the European Trademark
A four layered protection system for trademarks exists within the European Union.
The first layer is the national trademark protection by each individual member state, for which a separate application must be filed in each country where protection is sought.
The second layer is only relevant in the Benelux countries (Belgium, Luxembourg and the Netherlands), which created a regional trademark protection system.
The third layer is the registration of a EU trademark. The registration of such a trademark is valid within the whole European Union and only a single application must be filed.
The fourth layer is the international trademark protection according to the Madrid system administered by the World Intellectual Property Organization (WIPO). This system provides the opportunity to extend a national or EU trademark to one or several of the 124 countries which are signatory to the Madrid agreement for an additional fee for each country. Prerequisite is an already existing trademark protection in one of the member countries or a EU trademark.
The advantage of a EU trademark in contrast to applying for individual trademark protection in each of the member states is obviously the protection it provides for all 27 countries of the EU just by filing one application and paying one fee.
However, if protection is sought only in a small number of member states, the total fee might be lower and it is worth to check the possibility of attaining only national trademark protection. In addition to that, a EU trademark application could be rejected if there is a conflicting trademark somewhere in the EU, in which case the fee is not returned, while in a national application the conflicting trademark might not be relevant.
The application fee for a European trademark is 850 €. Once approved the trademark will be registered for 10 years with the option to extend it every 10 years.
Before an application, the following aspects should be thoroughly checked and clarified. As pointed out above if the trademark registration is rejected, the fee will not be refunded.
If you hold several companies of the same group, you should give it some thought to the consideration which company should hold the trademarks and all other intellectual property rights (such as technical knowhow, patents, trademarks, etc.). Usually, if one company holds a trademark and gives another company a license to use it, the company which received the license pays the owner license fees or royalty payments, which are usually also an instrument of tax planning between the two companies. Therefore, prior to making decisions, proper tax counsel must be received.
Further, we must make sure that your trademark is not registered as a EU trademark already and that there is no conflicting national trademark already registered in one of the 27 EU states.
Your trademark needs to be distinctive. That means that customers need to be able to distinguish your brand from another. We will have to examine that before the application. – At the same time, your chosen trademark cannot be too descriptive of the good or service you offer. (For example: “plastic” would be too descriptive)
Your application needs to include the category of goods or services that are supposed to be covered by the trademark. If you choose to register a European trademark, we will go with you through the 45 categories of goods and services (the so called Nice classification) and advise you what would be most appropriate. If your trademark is supposed to cover more than one category you need to pay an additional fee.
Summary
The EU trademark offers optimal protection if you prefer that your trademark is protected in the whole European Union. However, if you plan to focus your business activities only on one or two European countries it might be advisable to only apply for national trademark registration as it is cheaper and the application might not be blocked by some of the conflicting trademarks that exist on the European level.
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