What is the trademark registration procedure?
The Office for Harmonization in the Internal Market (OHIM), in charge of the registration of the Community Trademarks in the European Union follows a specific procedure, which can be divided in the following three periods/steps:
- Examination of the application (examination of absolute grounds for rejection, including the search for identical or similar Community trademarks)
- Publication of the trademark in the "Community Trademarks Bulletin".
- Period following the publication up to the registration. During this period objections can be filed against the trademark registration (within 3 months from the date of publication).
What are the main advantages and disadvantages of the EU trademark registration?
By filing a single application, the registration of an EU trademark offers protection in all the member states of the EU and the trademark rights are extended automatically, when a new state joins the EU.
The main disadvantage is that an earlier registration of a trademark in just one EU member state can result in the rejection of the application and the cost of dealing with objections can be high.
What language should be used to file the application?
One of the 23 official languages of the EU.
Furthermore, a second language, different from the first one, must be indicated. The second language must be necessarily one of the five languages of the OHIM (English, French, German, Italian or Spanish).
These languages shall be used for all administrative purposes.
How long does the EU trademark registration process take?
Five (5) to Seven (7) months
Please note that objections can prolong this timeframe by three to six months.
Is it necessary to carry out a trademark search in advance?
The OHIM only performs a search once the trademark application has been filed and does not carry out searches on individual request.
However, please note that it is recommended to carry out a trademark search in order to ensure that there is not another similar or identical trademark, a ground that may result in the rejection of the application. Please note that in case the trademark application is refused by the OHIM, no refunds are given.
Does the country of the applicant have to be member of the EU?
No, however, the application must be submitted by a local agent (based in the EU).
Is a prior registration in the home country of the applicant required?
No.
Who can file an objection against a trademark filed at the OHIM?
Owners of trademarks in any member of the European Union.
What is the validity duration of a trademark registration?
- 10 years since the registration date.
- Please note that the registration is renewable every 10 years.
Under what circumstances can a trademark be subject to cancellation?
Please note that in case the trademark has not been used within 5 years from registration or has not been used later for a continuous period of 5 years, it may be subject to cancellation.
How to choose between the registration of a trademark in one country or at the OHIM?
With a national trademark you can protect your IP rights in the country of registration and it might be the most appropriate solution if you do not intend to trade outside of the country of registration.
However, if you intend to trade in other countries of the EU, then you should consider the possibility to register your trademark at the OHIM. Thereby, you can protect your rights in all the EU member states.
Please note that trademarks are registered on a first come first served basis.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
