What are trade marks?
A trade mark is a distinctive sign which distinguishes the goods or services of a particular business (ie its ‘brand’). Trade marks can take many forms, including logos, words, slogans, animations, or colours.
What is trade mark registration?
Trade marks can be registered. You can register your intellectual property (IP) rights in a mark with an organisation (in the UK, this is the Intellectual Property Office (IPO)) to give them greater protection in case somebody else tries to use your trade mark for their business.
If you want to protect your trade mark in the EU, you can register it as an EU trade mark (EUTM). This single registration covers the whole of the EU. Using an EUTM can be cheaper than registering in multiple EU member states individually.
Why register your trade mark as an EUTM?
In the UK, a trade mark can be registered or unregistered. An unregistered trade mark can arise automatically if you start using a mark in connection with your business. This gives the trade mark owner intellectual property rights in the mark that they can enforce against others who use the trade mark without permission, using a ‘passing off’ claim. Passing off claims offer the holders of unregistered trade marks in the UK a means of protecting their IP rights. A successful claim can, however, be more difficult than a claim for infringement of a registered trade mark under UK law. For more information, read Trade marks and passing off.
No such protection exists EU-wide for trade marks that aren’t registered (ie there aren’t EU-wide equivalents of unregistered trade mark rights and passing off claims). Users of a mark may be able to protect their unregistered trade mark if somebody else uses it without permission within an individual EU member state, provided the relevant member state has domestic laws that enable such claims. The amount of protection varies, however, between states.
Therefore, it is good practice to register any trade mark that you want to use within the EU as an EUTM. This ensures you can make claims for EUTM infringement if your trade mark is infringed anywhere in the EU.
How to register a trade mark in the EU
You can apply for an EUTM through the European Union Intellectual Property Office (EUIPO). The process can take multiple months and must follow a series of steps:
1. Check whether your brand is capable of being an EUTM
To be capable of registration as an EUTM, your mark must be one of the following things:
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a word or words
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a slogan
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letters (eg an acronym such as ‘EUTM’)
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numbers
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an internet domain name
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a logo
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a shape (eg the shape of your product)
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a colour
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a gesture
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a position mark (eg design lines placed on a certain part of your product)
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a pattern
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a motion mark (eg an animation used digitally, such as a distinctive ‘loading’ symbol)
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a multimedia mark (eg a more complex animation)
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a hologram
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not a smell or a taste
2. Conduct a search
Before starting your EUTM registration application, you should conduct a preliminary search to look for any existing rights over the trade mark that you want to register. Searches aren’t compulsory, but they reduce the possibility of conflicts later on.
Conducting searches can be expensive, so it’s a good idea to target your search depending on the location, purpose, and nature of your planned use of the trade mark.
To conduct a search, you can:
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use various free online databases (eg the EUIPO’s eSearch Plus database of EUTMs)
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pay a specialist lawyer to search for you. They may be able to locate rights which wouldn’t be immediately obvious when making a basic database search, eg unregistered trade marks within individual member states
3. File an application
Apply for an EUTM via the EUIPO. This can be done using their online application portal (although alternate application options exist for more complex applications, usually completed by professionals).
The application can be filed by either the applicant themselves (ie the individual or an officer of the business that owns the mark) or by their authorised representative (eg their solicitor). If the applicant themselves applies, they can do so even if they’re based outside of the EU. However, any further dealings with the EUIPO (eg dealing with any issues that arise) must go through a representative based within the EU.
The application must meet the ‘minimum requirements’:
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it requests EUTM registration
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it identifies the applicant (ie the person or business that will own the registered EUTM)
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it lists the goods and services that the EUTM is to be used for
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always ensure that this is done thoroughly. If you want to add other products that you want the EUTM to cover later, you will need to file a new application
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you should be clear and precise when describing the products you will use your EUTM for. But do not be too restrictive (ie so specific you eliminate a product you may use the EUTM for).
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you should also group the products you want to cover by reference to their trade mark class
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it includes a representation of the trade mark (ie it shows the EUIPO what you want to register), and this representation meets the criteria for an EUTM set out in Regulation (EU) 2017/1001:
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it is one of the things listed above as capable of being an EUTM (eg a word or colour)
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it is capable of distinguishing your products from another business’ products, and
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it can be represented on the Register of EU Trade Marks in a way that allows others to determine what exactly the trade mark you’re protecting is (ie it’s not too abstract to record)
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A fee must also be paid.
If an application is filed but does not meet the minimum requirements, you will be asked to amend your application within 2 months. If you do not do so in time, the application will be refused.
4. Examination
After you file your application, the EUIPO will check it meets the minimum requirements and will check that no ‘absolute grounds for refusal’ apply. Potential absolute grounds for refusal include (but are not limited to):
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it’s not distinctive enough (eg it doesn’t differentiate your products from somebody else’s)
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it’s offensive (eg it contains a swear word)
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it’s just descriptive (eg it’s a word used to describe your product, such as ‘rice’ or ‘book’)
If the EUIPO decides that an absolute ground for refusal applies, they will object to your application and will inform you of this. You can attempt to overcome the objection by submitting evidence and written arguments arguing against the objection.
5. Publication
If your mark makes it past the above stages, the EUIPO will publish it publicly, beginning a 3 month ‘opposition period’. Within this period, others can object to your application if:
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they have IP rights in your trade mark which existed before your registration. This is called ‘opposition’
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they believe your EUTM registration should fail based on an absolute ground (above). This is called submitting an ‘observation’. The EUIPO will consider any observations raised
If any oppositions are submitted, you will have an opportunity to respond with evidence and written submissions. The EUIPO will evaluate the situation and issue an opposition decision. The decision will usually either refuse your EUTM registration (ie if the other party who submitted the opposition is held to have the right to the mark) or allow it to proceed (ie if you are held to have the right). The EUIPO’s decisions can be appealed.
6. Registration
If no objections are raised during the opposition period, or any that are raised are resolved in your favour, your trade mark will be registered as an EUTM.
EUTM registration lasts for 10 years and can be renewed indefinitely for further 10 year periods.
EU trade marks and UK trade marks
When the UK was part of the EU, an EUTM covered the UK too. The UK remained part of the EU trade mark system (ie the UK was still covered by EUTMs) throughout the Brexit transition period, which ended on 31 December 2020. Since then, EUTMs have not been protected in the UK.
The UK’s departure from the EU has no impact on the protection and validity of UK-registered trade marks within the UK.
If you want to protect your trade mark in the UK and the EU, you now need to file separate applications for a UK trade mark and an EUTM. For more information on registering a trade mark in the UK, read How to register a trade mark. You can also register your trade mark internationally.
Comparable trade marks
EUTMs which existed before 1 January 2021 are still protected in the UK, as they were automatically registered as ‘comparable’ trade marks at the UK’s IPO.
Businesses, organisations or individuals that had ongoing applications for an EUTM on 31 December 2021 had until 30 September 2021 to apply to register the same trade mark in the UK (ie using their EUTM application as a UK trade mark application). For more information, read the UK Government’s guidance.
Further advice
The EUTM trade mark process is complex. This guide provides an overview of the process, but if you’re applying for an EUTM you should also be aware of other factors such as:
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claiming priority or seniority if you have made an application to register an identical trade mark in another jurisdiction (ie other than EU-wide). This will affect what happens if multiple people file concurrent EUTM registration applications for the same trade mark
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the exhaustive list of absolute grounds for refusal
For more information, see the EUIPO’s guidelines. For help registering your EUTM, you can use our Trade mark registration service.
For specific information on protecting your trade marks and other intellectual property beyond Europe, see the government’s guidance.
