How is your EU trademark examined?

by | Jan 17, 2022 | DIY, Filing, General, Insights | 0 comments

Once you submit your EU trademark application, it goes to “examination”. Importantly, once the application is submitted, it is not possible to amend the trademark or add new goods and services. This is what happens under the hood between the time you file your application and your trademark is “published”. Publishing the trademark means that it has passed the examination and it is now open to oppositions from third parties. The opposition period is three months. If nobody opposes the application, the EUIPO issues a registration certificate. Step 1 – Formalities The first thing the EUIPO does is to make sure that the application fulfills some basic formal requirements so that the application date can be granted and examination can proceed. The use of their online application platform has greatly reduced the defects with formalities. The formalities check includes things like making sure that the application actually contains a trademark and a list of goods and services, it has an applicant with proper contact details, and that the application fee has been paid. Basically this step involves checking that the application has been validly submitted so that it can be taken into substantive examination. Step 2 – Classification Next, the EUIPO examines the “classification”. This means that the EUIPO checks that the goods and services that are included in the application are sufficiently clear and precise and that they are listed in the correct classes. If the applicant has used terms provided by the EUIPO in its classification tool, this step does not normally require manual review. Step 3 – Absolute grounds of refusal Next, the EUIPO reviews whether there are any “absolute” grounds of refusal. This is the real test of registrability. Here are the most common reasons for refusal: – Trademark is not distinctive – Trademark is descriptive – Trademark is misleading – Trademark consists of a shape that results from the nature of the product In addition to these, there are some other absolute grounds for refusal. For example, a trademark cannot be against public policy or accepted principles of morality, and it cannot contain flags of states or international organisations. It is rare that a trademark is refused on these other grounds. The main test is whether the trademark is “distinctive”. What happens if there’s a problem? The EUIPO examines these possible obstacles with respect to each member state. If there is a registration problem with respect to even one EU country, the trademark is rejected. For example, if the applied mark describes the goods and services in the Bulgarian language, the mark is rejected. The mark must pass the registrability tests for every single EU country. If it is descriptive or non-distinctive in any EU language, it cannot be registered. If the EUIPO considers that the trademark does not fulfill the criteria for registration, it will notify the applicant and explain the reasons why it thinks the trademark cannot be registered. The applicant has two months to respond. Responding to these notifications is bread-and-butter work for trademark attorneys. Typically a response includes legal arguments as to why the trademark can be registered despite the preliminary objection. Sometimes the defects are easy to fix (for example, classification issues), but sometimes they are more difficult. If the mark is found descriptive in the examination, it may sometimes be difficult to convince the EUIPO that they have made an error in their assessment.  One particular aspect of EUIPO’s examination deserves a special mention. In many countries trademark offices also examine prior registered trademarks and if the office finds similar registered trademarks, it considers them obstacles to the registration of the applied mark. The EUIPO does not examine prior registered trademarks. This means that even if you apply for a trademark that somebody else has registered, the EUIPO will not take an issue with that during the examination of your application. What happens after the examination? If the EUIPO considers that everything is in order, it will “publish” the trademark for opposition purposes. This means that other companies have the right to oppose the applied trademark. Most oppositions are based on a prior registered trademark. These can be either earlier EU trademarks or national trademarks of any EU country. It is important to realise that a prior trademark in any EU country is grounds for opposition and refusal of the EU trademark. Approximately 15% of EU trademark applications are opposed, but most oppositions are settled between the parties during the proceedings so they do not proceed to a final decision by the EUIPO. If everything goes well, the whole process is quite fast. If the application is examined in the fast track procedure, the whole process takes only about three and a half months of which the opposition period is three months. For many applicants these three months seem like forever because they cannot do anything but wait and see if somebody opposes the application. If there are hiccups with the application, the total time depends very much on how fast the applicant responds to the issues. Conclusion The EUIPO is very effective in examining the applications. The main things for applicants to keep in mind is that the trademark must be distinctive and non-descriptive in every EU language. If it is not, the application is rejected.

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