February 02, 2025
Trademark protection is essential for business. Trademark protects your brand and identity in the market. This blog explores all aspects of trademark protection in the European Union. We are based on the EU Trade Mark Regulation (EU) 2017/1001. Find out all the important information about registering, protecting and enforcing your rights.
Legal definition of a trademark according to the EU trade mark regulation
The EU Trade Mark Regulation (EU) 2017/1001 defines a trade mark as any sign. The sign can be graphically displayed. It distinguishes the goods or services of one company from those of other companies. Trademark allows consumers to identify the source of a product or service. The definition is broad and encompasses different types of characters. It is important that the sign has a distinctive character.
Trademark registration and legal effects of registration
Registration of a trademark gives the owner an exclusive right. This right relates to the use of the sign for the goods or services for which it is registered. Registration creates legal certainty. The owner of the Trademark may prevent others from using the same or similar mark. This applies to identical or similar products and services. The legal effects of registration are powerful and crucial for brand protection.
What can and cannot be registered as a trademark
Words, drawings, letters, numbers can be registered as a trademark. Colors, three-dimensional shapes and sounds can be registered. The sign must be distinguished. A sign that is descriptive cannot be registered. A sign that is common in a trade cannot be registered. A sign that is contrary to public order or morality cannot be registered. There are absolute and relative reasons for refusing registration.
The classification system established by the Nice Agreement
The Treaty of Nice established an international classification of goods and services. This classification is used for the registration of trademarks. It classifies goods and services into 45 classes. Classes 1-34 refer to products. Classes 35-45 refer to services. The classification makes it easier to apply for and search for trade marks. It helps in determining the scope of trademark protection. It is a standardized system that is used globally.
Paris Convention for the Protection of Industrial Property
The Paris Convention is an international treaty. It protects industrial property. It covers patents, trademarks, industrial designs, and other forms of IP. The Convention provides for a right of priority. A notifier has a right of priority in one Member State. For registration in other Member States. The priority period for trademarks is 6 months. The Convention promotes the international harmonization of IP law.
Absolute grounds for refusal of registration of a trade mark
There are absolute reasons for refusing to register a trademark. A trade mark cannot be registered if it is not distinctive. If it is descriptive of goods or services. If it is common in the store. If it is contrary to public order or morality. If it is misleading to the public. If it contains official signs or seals. If an identical trade mark has been registered earlier for identical goods/services.
Transfer, Enforcement, Bankruptcy and Trademark License
A trade mark can be transferred to another person. The transfer is usually carried out by contract. A trademark may be subject to enforcement. It can be used to collect debt. In bankruptcy proceedings, the trademark enters the bankruptcy estate. It can be sold to satisfy creditors. A trademark may be the subject of a license. The proprietor of a trademark may grant a license to another company. For the use of a trade mark for a fee.
EU trade mark application: procedure and conditions
An EU trade mark application is filed with the European Union Intellectual Property Office (EUIPO). The application can be submitted online or by mail. The application must contain information about the applicant. Graphic representation of the trademark. A list of goods and services for which a trade mark is sought. The application must meet the formal requirements. An application fee must be paid.
Labelling and classification of products and services
The designation and classification of goods and services are essential for trademark protection. It is necessary to specify the goods and services precisely. For which the trademark is intended to be protected. The Nice Classification is used. Proper marking determines the scope of protection of a trademark. It affects the ability to enforce rights. It is important to carefully select the classes and description of the product/service.
Right of Priority, Exhibition Right of Priority and Seniority
Priority allows the date of the first application to be recognised as the priority date. For later applications in other countries. Exhibition priority refers to the display of products/services at an official exhibition. It gives priority if the application is filed within a certain deadline. The seniority of a national trade mark allows the proprietor of an EU trade mark. To refer to the seniority of the earlier national trademark. If he renounces the national trademark.
EU trade mark registration procedure
The EU trade mark registration procedure involves an application. Formal exam. Search for earlier trademarks. Publication of the application. Deadline for third-party complaints. Examination of complaints. A decision to register or refuse. Registration of a trademark and publication of registration. The whole process can take several months.
Trademark search, search report and publication of the application
A trade mark search is recommended before filing an application. It is checked whether there are identical or similar earlier marks. The search report is prepared by the EUIPO. It contains a list of potentially relevant earlier trade marks. The publication of the application allows third parties to file an objection. On the registration of the trademark. It is important to conduct a search before signing up.
Separation of a trademark application
Separation of a trade mark application is possible if the application relates to more than one good and service. The applicant may divide the application into two or more applications. Each application covers part of the original list of goods/services. Separation can be carried out to speed up the registration process. Or to resolve complaints that relate only to a part of the goods/services.
Duration, renewal, modification and separation of trademark registration
The registration of a trademark lasts for 10 years. It can be extended indefinitely. An extension is requested every 10 years. The trade mark can be modified (change of the name or address of the owner). Splitting a registration is possible similar to splitting an application. Registration can be divided into two or more registrations.
Disclaimer, Revocation and Invalidity
The owner can waive the trademark. The revocation of the trademark occurs if the trademark is not used. Or if it has become a common name in the store. Or if it is misleading. The invalidity of a trade mark occurs if there were absolute or relative reasons for refusing registration. At the time of registration.
Appeals in the Registration Procedure
An appeal may be lodged against decisions of the EUIPO. An appeal is lodged with the Board of Appeal of the EUIPO. An appeal may be lodged against decisions refusing registration. About objections. About revocation or nullity. The appeal is used to review the decision of the EUIPO.
Registration procedure under the Croatian Trademark Act
The trademark registration procedure in Croatia is carried out by the State Intellectual Property Office (SIPO). The procedure is similar to that for an EU trade mark. It includes an application, a formal exam, a distinguishability test, the publication of an application. Deadline for objections, registration and publication of registration. Croatian trademark law is harmonized with European legislation. I hope this blog post is useful to you! For additional questions, feel free to ask at:
