Registration of an EU trademark

Information to be included in the application for an EU trademark 

An EU trademark is registered by submitting an application to the European Union Intellectual Property Office (EUIPO) and by paying an application fee. In addition to its name and contact details, the applicant must indicate in the application which goods and services the mark is to be registered for and which categories of goods or services in the so-called Nice classification they belong to. 

The applicant may claim so-called priority for the EU trademark application if an earlier application for the same mark, with the same goods and services, has been filed no later than six months before the filing of the EU trademark application. 

Processing of EU trademark applications 

The EUIPO will first check formalities and notifies the applicant if formal deficiencies are found. Within two months of receiving a notification from the EUIPO, the applicant must rectify any formal deficiencies in his application. After the formalities have been resolved, the EUIPO examines other conditions for registering the mark and issues a notification to the applicant if any obstacles to registration are found, such as the mark is non-distinctive or misleading. 

Upon request from the applicant, the EUIPO will send a search report on earlier EU trademarks that may be considered confusingly similar with the applied mark. However, the EUIPO does not reject the application by its own initial,  but the owners of prior rights must intervene on their own behalf by filing oppositions. 

EUIPO will inform the owners of earlier EU trademarks in the search report that an application for a similar mark has been submitted to the EU Intellectual Property Office. The notifications are sent only to holders of previous EU trademarks, not to owners of marks registered on national level in the European Union. 

Opposition period and opposition procedure 

Once the examination is completed, the EUIPO will publish the application,  opening a period of three months within which objections can be made against the registration of the mark by submitting so-called oppositions. The mark will be registered if no oppositions are timely submitted against the application. 

Oppositions can be based on previous protected marks in the EU or in any of the member states of the EU that cover similar goods or services. At the beginning of the opposition proceedings, the EUIPO examines if the opposition fulfils formal requirements. If the opposition passes the formal examination, the applicant and the opposing party will be informed of deadlines of the procedure. 

The applicant and the opposing party will have the opportunity to negotiate an amicable settlement of the case and to even suspend the opposition proceedings for the duration of the negotiations. In the absence of an amicable settlement, the opposing party has the opportunity to submit further argumentation and evidence and the applicant for the trademark application has the right to submit a response to the opposition. 

Once the parties have been allowed to comment on each other’s filings, the EUIPO will issue a decision on the basis of the arguments and evidence presented. The mark will be registered to the extent that the application was not rejected in opposition proceedings. 

Validity and renewal of the registration 

EU trademark registrations is valid for 10 years from the date of submission of the trademark application, and must be renewed each  10 years for the protection to remain in force. 

Registration requirements for trademarks

Non-Confusion with earlier protected mark is a condition for registration 

The confusion of a sign with another trademark is assessed on the basis of the overall impression of the target group of the mark. The assessment of the overall impression takes into account the visual, conceptual and phonetic similarity of the marks. 

Moreover, a trademark must not be confused with earlier company names or the last names of private people. In practice, company names have generally been an obstacle to a trademark registration only if the dominating part of the company name and the trademark have been almost identical. 

Distinctive character as a prerequisite for registration 

Generic names for products and services are not distinctive. However, if the generic term is used differently from its usual meaning, it is a distinctive sign. For example, the word espresso is a distinctive trademark for cars, but not for coffee products. In addition, words or symbols which, for example, purely describe the type, quality, quantity, purpose or price of the product or service are considered to be indistinctive. 

As an, the word weapon cannot be used as a trademark for a shotgun, or the word plus cannot be used as a trademark for a cleaner. Distinctive figurative marks are not considered to be simple patterns in their usual form of expression, such as circles, squares and basic forms of product labels. 

Moreover, shapes that exclusively consist of elements that are needed to obtain a technical result, and which substantially affect the value of the product cannot be protected as a trademark. 

Dilution and distintivity acquired through use 

A registered trademark may become indistinctive if it is used in the market as a generic term describing a product or service. A practical example of a trademark that become indistinctive in the Finland is the word Termos. 

On the other hand, a word, which was originally indistinctive, may, by extensive use, acquire a secondary distinctive meaning in addition to its general language meaning, that enjoys trademark protection. When assessing such changes in distinctivity, particular attention is on the length and extent to which the mark has been used. 

Trademark Databases