What are European trademarks and how to protect them?

Many people know that European Union is a political and economic Union between 27 Member States. However not so many people are aware of what European trademarks are and why their protection is so important for every business operating in the EU.

In this article, I will try to give some clarification in that regard.

In general, European trademark protection has two layers. The first one covers the national trademarks in every Member State, for example, a German trademark, a French trademark etc. Many companies own such trademarks but they are suitable for situations where these companies operate only in the relevant country.

However the European Union is a Common market, that is to say, you can trade freely in every country part of it without any customs.

Because of this, the EU legislation created a second layer of trademark protection – the European trademarks that cover the territory of all EU Member States.

The reason why these marks are important for every company is that there is no need for separate trademark applications in every country. You can file only one application paying only one Patent Office fee and you will have a trademark valid in all 27 States.

This is crucial because it will allow you to enter the EU with your own registered brand while saving time and money.

But why entering the EU is so essential from a business point of view?

In a nutshell, this is the biggest and most lucrative trade and political union in the world with a population of almost 500 million people and annual GDP of 15 trillion dollars in 2020, representing around 1/6 of the global economy.

If you do business in the EU or you consider doing that in the future, entering this market with a brand requires good preparation. The reason on one hand is that without a registered trademark, your brand can be copied from other competitors and your options for legal defense will be more limited.

On other hand, as a general rule of thumb, every trademark is valid only for the territory where it is registered. This means that if you have a registration for your brand name only in your country when you enter the EU without preparation, you may face legal conflicts with owners of earlier already registered identical or similar marks in Europe. Bear in mind that there are millions of registered marks in the EU.

To escape such negative consequences you need to know how and to what extent your trademark can be protected in the EU in advance.

I will give you one simple example. Let’s say we have a US company entering the EU market for sports shoes with a brand that is registered in the US only.

The fact that this company has a US mark doesn’t mean that this protection will cover European Union automatically. The company needs to file trademark applications for every single country where it wants to operate. For the EU this can happen based on one application that will cover the entire Union instead of filing 27 separate applications for every country

What are the risks if the company skips this step and starts using its brand without initial checking what is the situation and without filing a trademark application?

Well, there are two main possibilities that can occur:

  1. The First one is to start using the relevant brand without any issues, that is to say, no one else has a similar mark for shoes in the EU. You would think that this solves all problems. Not at all. Even without initial conflicts if you miss registering a trademark for your brand it is possible for someone else to copy your brand and to register it for the same products. Bear in mind that in the EU trademark protection arises based on a registration in contrast with the US where it arises based on the real market use. If this scenario happens, you will need to go through complex legal procedures in order to protect your brand name if this is possible at all because sometimes the conflicting mark can be registered in good faith.
  2. The second option is for the company to face legal conflicts with owners of already registered similar marks immediately. This will mean that not only the company won’t be able to register its trademark but it can be treated as a trademark infringer and its business in the EU can be jeopardised.

Because of all of this, it is quite important in case you want to operate in the EU to do your homework in advance, which means to conduct a preliminary trademark search whether there are earlier similar marks and to file a trademark application in time.

In case you want to learn more, including how to register a European trademark on your own, check this new Udemy course: The Complete Course on How to Protect European Trademarks.

In this course, you will learn the most essential moments related to European trademarks protection, including

  • What can be registered as a European trademark?
  • How does this protection arise?
  • What is the difference between a European trademark and a national trademark in a single EU Member State?
  • What are the requirements for protection?
  • What is the procedure for registration?
  • How can you register an EU trademark?
  • For how long will this protection be valid?
  • What will cost you to register such a trademark?
  • And some rules on how to maintain this protection in the time.

One key moment for every brand-building process

Trademark search is one of the most important parts of the brand-building process, although sometimes it is underestimated.

Most people think about brand building only as a marketing process where different marketing specialists develop a new brand name based on a variety of marketing requirements. 

That’s true up to a point but it’s not the whole picture. Why?

Well, the brief answer is that a good brand name doesn’t mean automatically that you can use it without legal obstacles.

What do I mean?

Let’s say, for example, that we have a company that hires a brand-building agency to create a new brand name for its business. The agency does the job and delivers the required brand. From that point we have two possible scenarios:

  1. The company applies for a trademark before the local Patent Office and the brand is registered as a trademark without problems. However, another option here is the brand to fail registration because there are identical and similar trademarks for the same name that are already registered by other companies.
  2. The second scenario is if the company doesn’t care about the registration of a trademark in which case the company uses its brand seamlessly, relying on pure luck. In this case, however, it is possible for the company to be accused of a trademark infringement by an owner of a registered identical or similar trademark if such exist.

All of that can happen because there is no preliminary trademark search in the brand building stage which to show whether or not earlier registered trademark rights exist.

Although you can use your brand without registration as a trademark, sometimes this could be a risk because it can evoke potential legal conflicts. Even without such problems, the brand owner will be in a more difficult position to defend its brand against infringers in the future because of a lack of registration.

So taking into account these options, trademark search is a vital part of the brand-building process. If you implement such a search in every stage of the process, you will be able to avoid conflicts and reduce risk to your business. Such searches will “red flag” possible issues in the early stages of your business development, which will give you more time to react properly.

In case you are interested in learning how to do trademark searches on your own, check this new Udemy Complete course on trademark search, where you will learn how to implement it for the territories of the US, Canada, the UK, Ireland, Australia and New Zealand.

New database for geographical indications – GIView

Marques Class 46 reports about a new tool for searching of geographical indications.

The new database, called GIview, is offered is offered by the EUIPO. It covers more than 5000 geographical indications from around the world. You can search based on their names or by country. The results can be shown as a list or as a map.

You can learn more for GIView from the video below.

Why keep an eye on your trademark protection?

This question can sound a bit strange. What means to keep an eye on a trademark?

Well, to be protected every trademark has to be registered with the Patent Office. Of course, there are some situations where even unregistered trademarks are protected to some extent but the general rule of thumb is that you have to register your sign as a trademark in order to take the full advantage of this protection.

Many people believe that after registration the work is done completely. But this is a wrong conclusion.

On the contrary. You need to do several things on a regular basis in order first for your protection to be active and second to prevent any infringements. After all the idea for the protection of a brand is this right to be enforced if it is necessary.

So what you need to do in that regard. There are two main essential things that have to be taken into account:

  1. Do a trademark search on a regular basis. Why? Even though the trademark search is more known as an activity that helps to discover what are the chances for registration before filing an application, it is relevant for the time after registration too.  The reason is that by doing a regular search you will be able to see whether there are new identical or similar trademark applications to yours. This will allow you to file oppositions in time to stop these new similar marks that can create confusion amongst the consumers.
  2. Store and manage your trademarks information well. It sounds basic as a recommendation but it is crucial for the mark’s protection. The reason is that every mark is registered but only for a limited term. In most cases for 10 years. After that, you need to renew the protection for the next period of 10 years. If you miss doing this you will lose your registration. Apart from this, you need to follow many Patent Office’s procedure rules as well as to be aware of how the mark is used and whether there are licenses for it. This requires good database management that will help you to accomplish this task easily.

So if we have to summarize, trademark protection requires more then just the act of registration. You need to be proactive in order for your trademark protection to be viable and active.

If you want to learn how to search for trademark in six countries, check this new Udemy course: Complete course on trademark search.

For building a trademark database you can check this another Udemy course: A complete guide on how to build an IP database using Asana.

Ferrari overcame a refusal for its 488 Pista Spider design in Australia

Ferrari has successfully overcome a refusal by the Australian Patent Office for registration of its vehicle model Ferrari 488 Pista Spider.

The case concerns a design application for this model filed in 2018 in Australia. The design was refused by the Office because it was similar to prior design of Ferrari 488 Spider.

As it is known, you can register a design only if it is new and original.

Ferrari didn’t give up. They hired the well-known expert in the field of luxury cars Anthony Moss to make a professional analyse of both designs. According to him they were sufficiently different taking into account that in the case of sport luxury vehicles consumers pay attention even to smallest details.

In the appeal the Office changed its position. It agreed that when it comes to car design, authors freedom to innovate is somewhat limited because they always have to use wheels, doors, bonnets and mirrors. So in that regard consumers would apportion more weight to areas where the designer has freedom to innovate, which in this particular case was the front and rear section of the car.

In the case at hand, the new model has some differences. For example, an air damn and air scoop running through the front bumper and up through the bonnet of the 488 Pista was different compare with the older design. The air damns and the wrap around diffusers in the rear of the new model were also considered different. 

This case shows clearly that protection of industrial designs can be quite tricky sometimes. The freedom of innovation has to be bear in mind and the field for which the designs will be used. This can be crucial for the success or failure of the design application.

Source: Phillips Ormonde Fitzpatrick – Peter Wassouf, Lexology.

New important rules for copyright protection of photographs in Switzerland

Some amendments to the Copyright Law of Switzerland have been made recently, which aim is to make the law more responsive to the new digital era.

One of the amendments concerns the protection of photographs. Until recently, it was possible only photos with individual character, result of creative efforts, to be protected in Switzerland. All other ordinary photographs with just a technical character were not subject to any protection.

This changed on 01.04.2020. From that moment on even photos without individual character will be protected by copyright although the term of protection will be 50 years from the date of their creation in contrast with 70 years after the death of the author in the case of original photos.

The new rules will be valid for photographs created before the date when the amendments came into force in case that the photos were not been used. For situations where such photos have been put in use, for advertisement, in catalogs etc., the new amendments will be not valid.

Source: CMS von Erlach Poncet AG – Simone Brauchbar Birkhäuser and Aline Steffen, for Lexology.

Samoa joins the Hague Agreement for registration of designs

1.jpgWIPO reports about the accession of Samoa to the Hague Agreement for international registration of industrial designs. In the way, the country becomes the 72nd Member State of the agreement, which will enter into for on 02.01.2020.

As it is well-known, the Hague system allows international protection of designs based on a single application for the designated countries and paying one fee for that purpose.