If you are planning to apply for an EU trademark, there are many aspects that you need to take into account. Here’s a simple checklist to make sure the most important aspects are covered.
☐ Identify your assets
Start by identifying your trademarks. The chances are you have more than one. These are typically your company name, product/service names, logos, taglines and slogans. Non-traditional trademarks include product or package shapes, mascots, colours or colour combinations, and jingles. Trademarks can be almost anything that distinguishes your products and services from your competitors’ products and services. It’s important to have a good overview of your assets before choosing which one of them should be legally protected. In most cases you should start protecting your assets with product/service names and logos. Trademark registration costs money, so unless you’re lucky enough to have an unlimited budget, you should start by protecting the most important assets first. If you are planning to protect non-traditional trademarks (colours, sounds, movements, etc.), it is highly recommended to get legal advice.
☐ Identify the legal entity owning the trademark registration
Usually the owner is the company using the mark. Sometimes it can be the entrepreneur in his personal capacity. Identifying the proper owner is more important if the company is already bigger and/or has more than one shareholder. When WeWork prepared for its IPO, one of the many issues that came to light with their SEC filings was that the founders of WeWork had registered the trademarks in their other company, and then sold the rights to WeWork for nearly 6 million USD. There is no legal requirement that the company owns its own trademarks, but if it does not, it may be a big red flag.
☐ Make sure your trademark is available
Before committing to a name, make sure it does not infringe on other trademarks. If somebody else has registered the same or a similar trademark for the same or similar goods and services, it may prevent the registration and use of your trademark. It pays off to spend a little bit of time and money to choose a mark that is available. Changing the trademark later after it has been adopted is painful and expensive. Also, if the trademark application is rejected because of prior registration, you will not get back the EUIPO fee you paid for the application. The EUIPO will not by itself consider prior trademarks as obstacles for your registration, but other companies may decide to oppose your registration. If that happens, the EUIPO will decide whether there is an obstacle to your registration.
☐ Make sure your trademark is eligible for legal protection
The main requirement for getting the registration is that the trademark is “distinctive”. If the trademark is not distinctive, the EUIPO will refuse registration and you will lose the EUIPO fee you paid for the application. The trademark is not distinctive if it describes the goods/services covered by the application. For example, the word “TASTY&DELICIOUS” describes food products and could not be registered as a trademark. For more information on how to assess trademark’s descriptiveness and distinctiveness, see here.
☐ Make sure you choose the best trademark type
When you make the application, you need to indicate the type of trademark you want to register. Most trademarks are so-called word marks (names of products/services) or figurative trademarks (logos). If your trademark is distinctive enough, in most cases you should start with a word trademark. It protects the name itself and is not limited to any particular graphical expression of it. It gives the strongest legal protection for your trademark. On the other hand, if your trademark has particularly striking graphical elements, you should also consider registering that as a trademark. Remember, however, that a trademark application can contain only one trademark. If you want to register the name of your product or service as well as its logo, you need two trademark applications. One for the word, and one for the logo. For more information on how to choose the mark type, see here.
☐ Take plenty of time to draft the list of goods and services
Drafting the list of goods and services is perhaps the most important part of the application. Your trademark rights, if the registration is granted, exist in relation to those products/services that you have identified in the application. All goods and services are divided into “classes”. There are 45 classes in total. Classes 1 to 34 cover products, and classes 35 to 45 cover services. It is highly recommendable to draft the list of goods and services before starting to fill the actual application form. You can draft the list on EUIPO’s TmClass tool. In our experience, the biggest and most common problem in DIY trademark applications is a defective list of goods and services. In most cases it is advisable to use the broadest possible terms in the list of goods. So, for example, rather than using the term “kielbasa sausage”, use “meat and meat products”. Broader the better.
☐ Know the costs involved
The biggest cost of an EU trademark application is the EUIPO fee. It is a fee that the EUIPO charges for examining your application. The basic fee (covers one trademark class) is 850 EUR. The second class is 50 EUR extra, and after that each additional class costs an additional 150 EUR. If you use an attorney, you will also have to pay attorney fees. Once you have paid the application fee, you will not be able to get it back.
☐ Submit the application
EU trademark applications are submitted electronically on EUIPO’s website. Make sure you have got everything in order before filing.In particular, draft the list of goods and service before you start actually filing your application. Once the application is filed, it is not possible to make any changes to the application, other than restricting the list of goods and services. You cannot modify the mark or add new goods and services. If you use an attorney, you don’t have to worry about anything on this list (apart from ignoring scam invoices). Your attorney will take care of everything for you.
☐ Ignore scam invoices
After you have filed your trademark application, you will unfortunately receive scam invoices. They are designed to trick you into thinking that they have been sent by an official authority and they often seek to create pressure by stating it is a payment reminder. Unfortunately, many companies pay. Remember that EUIPO does not send invoices. Any invoices you receive relating to your application are attempts to scam you. If you use an attorney, you will receive invoices from them for services rendered. You can read more about scam invoices and see some examples on EUIPO’s website here.
☐ Set a calendar reminder for 4 months for future filings
If your EU trademark is your first trademark application for that particular trademark, you have a six-month period to file for the same trademark in other countries with the “priority” date of your EU trademark application. The priority period in a way “reserves” your rights to your trademark with respect to other countries. If you file your trademark in other countries within the priority period, you can claim protection from the application date of your EU trademark rather than from the date of filing the trademarks in other countries. You can also file the international registration later, but in that case you will not benefit from the EU trademark’s application date.
Beware of trademark scam invoices
Almost all trademark applicants receive scam invoices. What are they, how can you spot them, and what should you do?
