Essential Considerations for EU Trademark Registration

Trademark registration and maintenance are crucial for brand protection in Europe, as elsewhere in the world. Through EU trademark registration, you can access the legal systems and tools you need to prevent others from abusing your trademark rights and causing financial and reputational damage to your business.

Given the importance of trademark registration in the European Union (EU), it is useful to be aware of the following fundamental steps: 

1) Choose the market you want to enter 

If you want to acquire protection in just one EU member state, for example, because it is where your business is based and where all your trading activity will take place, you can opt for national registration only. In France, for example, this means submitting an application to the National Industrial Property Institute (Institut National de la Propriété Industrielle, or INPI). 

If you intend to do business only in Belgium, the Netherlands, and/or Luxembourg, you could opt for a regional registration by filing your application at the Benelux Office for Intellectual Property (BOIP) to protect your brand in those three member states. 

However, if you intend to expand your trading activity into several EU member states, the best option may be to go for an EU trademark registration (EUTM). EUTMs are valid across all of the EU member states and can be obtained by submitting a single trademark application to the European Union Intellectual Property Office (EUIPO). 

If you trade internationally, however, you might want to consider an international trademark registration (IR), which will also cover the EU. 

If you’re unsure where to register your trademark, then it is advisable to consult with a specialist trademark attorney, who can provide you with targeted legal advice [1]. 

2) Ensure that your mark satisfies essential requirements 

Every trademark registration in the EU must meet a specific set of basic requirements, including the need for the mark to be novel, distinctive, and lawful. 

A trademark is not novel if it is identical to an existing registered trademark or a prior pending application covering the same or similar goods and services. That's why it is essential to carry out a detailed trademark search of existing registrations and applications (see point 3, below). 

For a trademark to be distinctive, it must be capable of distinguishing a product or service from others. Any term that is too descriptive – for example, a simple adjective such as ‘wonderful’ – is unlikely to meet this requirement. 

Finally, your chosen mark should not be unlawful. This means, for example, that it should not breach general law, public order, or ethical standards.

Again, a specialist trademark attorney can assist you with targeted advice and analysis on meeting EU trademark registration requirements [1]. 

3) Undertake clearance work 

One of the main pitfalls for those who file for an EU trademark registration is not having undertaken enough due diligence on the proposed mark. 

With thousands of trademarks registered every minute, it’s important to undertake a robust trademark search using publicly available databases, proprietary tools, and consulting with specialist suppliers to ensure that there will be no obstacles to your EU trademark registration. 

If you launch a new brand or product without first clearing your chosen name for trademark conflicts, you could be faced with a costly rebranding exercise if your chosen name is already registered or used. 

Trademark searches provide a quick and easy way for brand owners to check if a trademark is available for registration and use. For example, at Questel, you can choose between four levels of trademark search: our AI-powered tool for trademark screening, our algorithm-driven comprehensive search, our analyst-driven comprehensive search, and our searches by industry and with common law results. 

Our global network of IP experts can also advise you on the risks associated with your chosen brand names, drilling down further into your candidate trademarks, conflicting trademarks, and country-specific detail as required [1]. 

4) Make sure you complete the trademark application procedure correctly 

Only once a trademark is registered will you have the right to use it exclusively (in your specified markets and for your specified goods and services), so be sure to follow the application process through every stage to registration, as merely submitting an application and paying the fee is not enough. 

Questel provides a complete, end-to-end trademark filing service from pre-filing analysis to final verification to ensure every administrative aspect is managed and all requirements are fulfilled in the different jurisdictions [1]. 

Our administrative experts work as an extension of your team to improve the efficiency of your process, remove the administrative burden of pre- and post-filing tasks, identify opportunities for time and cost savings, and free up your team to focus on more strategic IP activities. Once the administrative stage is completed, you can decide to ask our legal partners to take responsibility for the trademark registration and prosecution process to ensure applications succeed rapidly, including the management of office actions, provisional refusals, and oppositions as they arise [1]. 

5) Don’t forget about trademark maintenance

Registration is only the first step of the trademark management process. To safeguard and maintain your registrations, you also need to consider: 

• How to monitor your trademark(s) to identify and block potential infringement (find out more about the role of trademark watch and online brand protection); 
• How to build your portfolio as your business grows (for example, through additional trademark registrations); 
• How to renew your IP registrations cost-effectively (find out more about trademark and design renewals); 
• How to keep your portfolio up-to-date as your business changes (including filing the necessary recordals if ownership details change); and 
• How to manage your trademark, design, and domain name portfolio efficiently to ensure you keep on top of necessary deadlines and formalities (for example, by using an IP management system or domain name management service). 

Contact us today to find out more about our end-to-end EU trademark registration and design filing support services. 

[1] Questel does not provide any legal services. Legal services are provided by independent IP attorneys on the basis of a separate engagement agreement between you and, if you wish to, a partner IP attorney firm.