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Trademark Filing & Prosecution

3 essential considerations before registering a trademark in Europe

If you trade in Europe then, as in the rest of the world, registering your trademark is essential to the protection of your brand and the best means of preventing others from abusing it, causing financial and reputational damage to your business. Given the importance of trademark registration, it is useful to be aware of three fundamental aspects to be resolved before going ahead with the registration procedure.

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1) Choose the market you want to enter

If you want to obtain protection in just one member state of the European Union, 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 Italy, this means submitting an application to the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, or UIBM) of the Ministry of Economic Development.

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

If you intend to expand your trading activity into several EU member states then the best option is to submit your trademark application to the European Union Intellectual Property Office (EUIPO) for an EU trademark (EUTM). Such a trademark is valid across all of the EU member states and if new countries join the EU your trademark would also be protected in that new member state.


2) Ensure that your chosen mark satisfies essential requirements for registration

Every trademark must meet basic requirements of distinctiveness, extrinsic novelty and lawfulness.

Distinctiveness means that a mark is capable of distinguishing a product or service from others; a simple adjective such as ‘wonderful’ would not be distinctive.  A mark 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; it is therefore essential to carry out a detailed search of prior registrations and applications. Finally, lawfulness refers to ensuring that a use of a chosen mark would not, for example, be a breach of general law, public order or ethical standards; this would include a mark that incited racial hatred.


3) Make sure that the trademark application procedure is completed correctly

Only when a trademark has been registered will you to have the right to use it exclusively. 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.

With the new guidelines introduced by Regulation EU 2015/2424, it is no longer necessary for the mark to be graphically represented; it will be sufficient to appropriately represent it using generally available technology, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

For EU trademarks, as for most national trademarks, you can submit your application online.  For EU trademarks, online applications for a single mark cost 850 Euros and can be carried out in a single language (the choices are: xxx); the cost of filing a printed format application is 1,000 Euros so it makes sense to file online.

During the application procedure, and once your trademark has been registered, it is a good idea to make use of a search tool for trademark applications and registrations called eSearch plus provided free of charge by the EUIPO. Registered users can set up automatic monitoring alerts and receive a notification whenever the Office receives applications for trademarks that are in potential conflict with yours. As soon as your application has been assigned a filing date, you can raise objections to EUTM applications and national applications filed after that filing date.

3 essential considerations before registering a trademark in Europe