Whether registered or unregistered, the exclusive rights to a trade mark in Europe are acquired through use. However, a registered trade mark has
the backing of the Trade Marks Act 1994 which means that a proprietor does not have to rely on passing off for protection. Passing off requires proof
of goodwill, misrepresentation and damage which can include imperial research and financial accounting of investment in the mark. A registered trade
mark requires a simple ‘cease and desist’ letter to inform a competitor they are infringing your rights.
To register a trade mark in Europe, applications should be registered through the European intellectual property office ‘OHIM’ (Office for Harmonisation in the internal market).
A proprietor of a registered UK trade mark has an exclusive right over the mark in Europe for the goods and services it has been registered under.
Where a trader files an application for a trade mark in Europe which conflicts with an existing registered mark, the proprietor of the earlier mark will be notified of the application.
The registration process can take up to 12 months, although protection (if successful) takes place from date the mark is filed.
European applications require the following details:
- The type of trade mark for application to be filed (word mark, figurative, three-dimensional mark, sound mark).
- A representation of the mark.
- Do you have a specific reference you would like us to use?
- What first and second languages shall we use? Usually English and Italian.
- Is there an existing priority claim? (If so - country of first filing, date of first filing).
- Is there an exhibition priority claim? (to obtain the benefit of the date on which a trade mark was exhibited at an official exhibition)
- The name and address of whom the owner of the mark will be (i.e. individual or company).
- The nationality of the owner (if an individual) or the place where incorporated (if Company).
- Classes the mark is to be filed in with detailed specifications
There are 45 classifications in the European trade mark system. Classes 1 to 34 are for goods and services. Classes 35 to 45 are cover services. Classifications can include up to 15,000 specifications.
A European trade mark covers the 27 member states which are currently Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland,
France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia,
Spain, Sweden, United Kingdom.
The steps to registration in Europe include a non compulsory trade mark a search against the UK IPO database of registered trade marks.
Although this search is not compulsory, filing an application without a search is like walking blind. With European application fees at a
costly €900.00 (which includes 3 classes) plus legal fees, filing an application without checking to see if your mark is not already registered
is risky business. A simple trade mark search will allow you to understand exactly where you stand with your proposed trade mark prior to paying
out for an application.
Once filed, your mark will be examined, which is essentially the same process as a trade mark search, and a report will be sent to you or your agent.
If your application is accepted by the Examiner it will be published in the trade marks journals for a period of 3 months to allow for oppositions from the general public.
Very often brand owners will check these publications for potentially conflicting marks.
If your mark is not opposed the mark should be automatically registered at the end of the 3 month publication period.
If you have any more questions about trademark registration please see our FAQs or call us free on 0800 862 0370
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