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Filing for an EU Trademark is a wise decision if you want to protect your brand across the European Union. It is a valuable tool for ensuring that no one copies your products and hard-earned brand image. In this article, you will find out what the requirements are to get an EU Trademark, the scope of protection, the application process, as well as other relevant practical aspects to take into account throughout the process.
If you need help or advice to register your trademark, our specialized trademark lawyer will be delighted to help you.
What is an EU Trademark and am I able to get one?
A registered trademark grants you exclusive rights over “distinctive signs”, which include the following concepts:
- Packaging of goods
- Smells (with specific requirements which shall not be explored here. Find out more
A single trademark can protect one or a variety of these concepts all at once, as long as these concepts come together to create a distinctive sign that identifies your brand and differentiates it from others.
Scope and duration of IP protection
An EU Trademark will protect your brand across all EU countries for 10 years before it must be renewed. Information relevant to renewal can be found below in the section titled “IP Monitoring and TM Renewal”.
How can I apply for an EU Trademark?
Now that we have covered the definition of a registered trademark in the EU and its scope, we shall now cover the application process, which must be conducted through the EUIPO (European Union Intellectual Property Office).
The application process can be split up into 5 steps:
- Trademark Search
- File the EUIPO Trademark Application
- Examination Period
- Trademark Issuance
For the purpose of giving an example, we shall go through the TM application procedure under the presumption that you want to register a logo as a trademark in the EU.
Step 1: Trademark Search
Before filing your application, it is wise to first check if your logo is not already registered. This search can be done free of charge through eSearch plus and TMview. In these portals, you can search both with text and by dragging and dropping an image of your logo into the search bar. For official EUIPO information regarding trademark search criteria, click here.
Once you have found that your logo is distinguishable from those already registered, you can proceed to start the EUIPO application process.
Step 2: File the EUIPO Trademark Application
The easiest way to start the application process is online through the official EUIPO website. Here, you will find two options.
The Fast Track option is the most efficient way of protecting your brand as quickly as possible. On average, these applications are processed 50% faster and take just 3 weeks to be published. This would be recommended for most trademarks and requires that payment be made at the very beginning – the examination period cannot begin until the payment (850€) has been received.
The Fast Track option is a simple 5 step process that the website takes you through. An informative explanation of the 5 steps can be found here. An important aspect to consider is the input of the goods and services you will provide under this trademark. If you are providing goods and services in various industries or sectors, and therefore need to include several classifications, you will have a higher risk of a problematic application. Fortunately, the EUIPO have created a Goods & Services builder to help you, which can be found here.
The Advanced Form should only be used for more complex applications involving a customized goods and services submission, a collective mark, an international trademark transformation, or use more than one language in your application.
Step 3: Examination Period
Once filed, an EUIPO examiner will review your trademark application and within one month will inform you if there have been any issues. This could be an innocent mistake in the form, which is easily fixed, or a concern regarding the distinctiveness of the logo, for example.
Most issues that arise are often innocent mistakes. In this case, you have two months to correct any problems and move forward with the trademark application procedure.
Step 4: Publication
Once provisionally approved, your trademark will be published in the EU Trademark Bulletin. This will be published for three months, during which time third parties may review your mark and, if they believe that it is too similar or is a copy of their trademark, they can file a notice of opposition. In this case, your application could be delayed for more than 2 years given the length of the opposition procedure. [If your application has been opposed by another party, learn how to overcome this here.]
Step 5: Trademark Issuance
If no third parties have filed oppositions and your application is in order, congratulations! Your trademark will be approved by the EUIPO and within 6 months of publication, you will receive a registration certificate. This is a document that proves your exclusive legal right to use your trademark throughout the European Union. But it isn’t over yet…
Follow-up: IP Monitoring and TM Renewal
Just because you have the IP rights protecting your brand with your shiny new trademark, that doesn’t mean that your brand is free from risk. It is now up to you to ensure that nobody else tries to use your brand for their own commercial gain.
In order to facilitate the monitoring and continued protection of your IP, we have partnered with [insert partner’s name here with a link] to ensure that you don’t have to worry about this part of the process.
Don’t forget that your trademark is only protected through EUIPO for 10 years. At the end of this period, you must file for a renewal. It would be wise to carefully manage this or hire an IP lawyer to take charge since the EUIPO will not remind you when your protection is ending.
Final words about International Trademark
We hope that you now feel much more comfortable with regard to your trademark application. However, if you are wanting to protect your IP in more countries than just the EU, there is another procedure to register an International Trademark through the WIPO (World Intellectual Property Organization) that allows you to protect your brand across the world. You can learn «How to register and international trade mark in 3 steps«. If you have any doubts, please don’t hesitate to get in touch with one of our experienced IP specialists.Read More
In December 2018, the World Intellectual Property Organization (WIPO) published its annual World Intellectual Property Indicators 2018 report, which shows IP statistics worldwide. Patent filings around the world reached 3.17 million, representing a 5.8% growth on 2016 figures, trademark filings totalled 12.39 million, up 26.8% on 2016, and industrial design filing activity exceeded 1.24 million. China recorded the highest application volume for each of these IP rights.
Regarding patent filings in the Latin American and the Caribbean region, WIPO´s study report a slight decrease (-0.1%) on the average annual growth from 2007 to 2017, with 57,600 patents filed in 2017.
On the other hand, trademark filings in the region showed a 3.3% increase on the average annual growth over the same period, reaching 715,900 applications in 2017. This average percentage annual growth was similar to that for North America (3.9%) and higher to the one in Europe (0.2%).
Industrial design filings during the 2007-2017 period in the Latin American and the Caribbean region also shows a slight average annual increase (0.6%), with 15,500 filings in 2017.
Below are IP data for the period 2007-2018 according to the statistics published by the corresponding PTOs of the top five largest Latin American economies: Brazil, Mexico, Argentina, Colombia and Chile.
From 2007 to 2018, patent filings in Brazil have increased 15% overall. However, the number of applications has fallen for five consecutive years, with the decline in non-resident applications being the main driver for the decrease. From 2017 to 2018, there was a slight reduction from 28,667 to 27,551 (-3.9%) in patent filings, although there was a large increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018. Additionally, in 2018 the patent backlog was reduced by 7.4% with respect to 2017.
In 2018, applications from the U.S accounted for 30% of the total patent filings, followed by Brazil (20%), Germany (8%) and Japan (7%).
Mexico has experienced a slight overall decrease (1%) in patent filings from 2007 to 2018, with 16,424 applications filed in 2018. Regarding patent grants, 8,921 applications were granted in 2018, 5% more than in 2017.
Applicants from the U.S. accounted for 44% of the total applications in 2018, followed by Mexico, Germany and Japan (7% each).
Patent filings in Argentina have also experienced a decrease over the last years, with 3,443 applications filed in 2017. Interestingly, during the 2016-2017 period, there was a 56% decrease in resident applications, whereas non-resident applications slightly increased (4%). Regarding patent grants, these have almost doubled in the period 2008-2017, with 2,302 patents granted in 2017. No data are yet available for 2018.
Except for a marked decrease during 2009 and 2010, patent filings in Chile have been rather steady, with a slight 7% increase from 2017 (2,892) to 2018 (3,100).
30% of the applications in 2018 were from U.S. applicants, 13% from Chile, 9% from Switzerland and 8% from Germany.
Colombia also recorded a 7% increase in patent applications from 2017 (2,049) to 2018 (2,372), and a remarkable 16% growth for the period 2007-2017. In 2017, 32% of the filings were from U.S. applicants and 25% from Colombian applicants, followed by Switzerland, Germany and France in number of applications. No data are yet available for 2018.
Regarding trademark applications, both Brazil and Mexico have seen an overwhelming growth during 2007-2018: applications in Brazil have increased 96% since 2007, reaching 204,419 applications in 2018, whereas in Mexico this increase went up to 103%, with 156,156 applications filed last year.
Resident filing activity has driven this growth in Brazil, with an average of 82% in resident filings during the period 2007-2018. The second country in number of trademark applications in Brazil is the U.S., whose share in 2018 was 4%. Resident filings in Mexico represented an average of 68% during the period 2007-2018. The second country in number of trademark applications in Mexico is also the U.S., with 17,449 applications (11%) filed in 2018, followed by Germany (3%).
There has been a significant increase in trademark registrations in Brazil during the last year, from 123,362 in 2017 to 191,813 in 2018 (55.5%). More importantly, the backlog was reduced from 358,776 by the end of 2017 to 191,535 by the end of 2018, which represents a decrease of 46.6%.
Trademark registrations have increased 150% in Mexico during the period 2007-2018, rising from 49,746 registrations in 2017 to 124,023 in 2018.
With an overall 4% increase in trademark applications in Argentina from 2007 to 2017 and 74,722 filings in 2017, resident applications represented an average percentage of 76% during the period 2007-2017.
Except for a drop in 2009, trademark filings in Chile have been rather stable, with an overall increase of 18% during the period 2007-20018 and 47,407 filings last year. Resident applications in Chile represented an average of 69% during the period 2007-2018.
Colombia has experienced a significant overall increase (73%) in the number of trademark applications during 2007-2017, with 42,725 filings in 2017. Resident applications in Colombia showed an average of 57% during the period 2007-2017. There has also been a substantial increase (71%) in trademark registrations in Colombia during 2007-2017.
Sources: http://www.wipo.intRead More
by Marta Garcia
According to the 2018 Activity Report recently published by the Brazilian PTO (INPI), last year there was a productivity increase and a substantial reduction of processing time and backlog for trademarks and industrial designs. However, the backlog and the average examination time for patents still continues to be very high.
The number of trademark filings rose moderately from 186,103 in 2017 to 204,419 in 2018, which represents an increase of 9.8% (Figure 1). Likewise, there was a significant increase in trademark registrations from 123,362 in 2017 to 191,813 in 2018 (55.5%). More importantly, the backlog was reduced from 358,776 by the end of 2017 to 191,535 by the end of 2018, which represents a decrease of 46.6%.
Figure 1: Trademark filings (1999-2018)
According to the PTO´s report, the processing time from trademark filing was reduced from 48 months (in applications with opposition) and 24 months (in applications without opposition)in 2017 to 13 and 12 months in 2018, respectively. This substantial processing time reduction has been possible thanks to the INPI´s technical preparation to adhere to the Madrid Protocol in the near future. According to the INPI´s Strategic Plan 2018-2021, which was published in October 2018, the goal is to further reduce the processing time to 8 months in applications with opposition and to 4 months in applications without opposition.
The 2018 Activity Report also shows a 63% reduction in the backlog of industrial designs, from 9,288 applications pending in December 2017 to 3,433 in December 2018.
During the same period, there was a 40.3% increase in the number of industrial design registrations, from 6,220 to 8,725. In addition, there was a slight increase (1.9%) in the number of filings, rising from 6,000 in 2017 to 6,111 in 2018 (Figure 2).
Figure 2: Industrial design filings (1999-2018)
Since 2016 the INPI has been introducing several measures with the aim of tackling one of the biggest patent backlogs in the world, such as a 25% increase in its professional staff, including the recruitment of more than 200 new examiners, optimization of internal procedures, and improvements in the electronic systems.
Moreover, the INPI has launched several Patent Prosecution Highway (PPH) programs since 2016 in order to expedite patent examination. Currently the INPI has running PPH programs with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), as well as the Argentinian, Chilean, Colombian, Costa Rican, Paraguayan, Peruvian and Uruguayan Patent Offices, all of which are members of the IP Collaborative Project PROSUR. There are also PPH programs with the European Patent Office (EPO), the State Intellectual Property Office People’s Republic of China (SIPO), the United Kingdom Intellectual Property Office (UKIPO) and the Danish Patent and Trademark Office (DKPTO).
As indicated in its 2018 Action Plan, the INPI further intends to enter into new PPH agreements with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (INPI).
However, despite these efforts, the 2018Activity Report continues to show worrying numbers.
Even though there has been a high increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018, and the patent backlog has been reduced by 7.4% with respect to 2017, the year 2018 still closed with discouraging backlog statistics: 208,341 patent applications are still pending a first instance decision (Figure 3).
Figure 3: Patent applications pending final decision (2009-2018)
As for patent filings, there has been a slight reduction from 28,667 in 2017 to 27,551 in 2018 (-3.9%).
According to the 2018 Activity Report, the average decision time for patent applications in Brazil from filing is currently 10 years, with pharma and IT patent applications reaching a maximum average of 13 years (Figure 4).
Figure 4: Average decision time for patent applications (in years)
The INPI´s Strategic Plan 2018-2021 states that the goal is to reduce the average decision time to 5 years from the filing date. However, this document indicates that the achievement of this goal depends on the approval of the most radical and controversial measure aimed at addressing the patent backlog that the INPI has proposed: an automatic granting procedure of patent applications that were opened to public consultation in 2017.
According to the proposal, if the procedure is enacted, a patent application (excluding pharmaceutical applications) filed or with the PCT’s national phase initiated up to the date of publication of the resolution and with examination requested, will be granted within 90 days without any substantive examination, after the issuance of a notice of admissibility in the simplified procedure, provided that third-party observations (pre-grant oppositions) have not been filed against said application. Applicants may request their patent applications to be excluded from the automatic granting procedure so it is subjected to the standard substantive examination.
Nonetheless, at the time of writing this article, the automatic granting procedure, which was proposed by the INPI together with the former Ministry of Industry and Foreign Trade and Services (MDIC), has not yet been approved.
Moreover, since Brazil´s new president, Jair Bolsonaro, took office on January 1, 2019, the INPI no longer depends on the MDIC, but to the Special Secretariat for Productivity, Employment and Competitiveness of the newly created Ministry of Economy.
Source: http://www.inpi.gov.brRead More