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.
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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.

Blog’s and social media posts with easier copyright registration in the US

The US Copyright Office announced it new form for registration of copyrighted works. It will allow authors of short posts in blogs or social media to register their works faster and easily.

However, in order to receive a registration, all works never mind how short they are, have to meet all requirements of the Copyright law for such protection.

As it is well-known, although copyright registration is not mandatory in the US, it provides authors with some advantages when it comes to lawsuits for copyright infringements.

According to the announcement:

Applicants may register up to fifty short online literary works per application. To qualify, each work must contain at least 50 but no more than 17,500 words. The works must be created by the same individual, or jointly by the same individuals, and each creator must be named as the copyright claimant or claimants for each work. The works must all be published online within a three-calendar-month period. If the Office registers the claim, the registration will cover each work as a separate work of authorship.

For more information here.

If you want to learn what is the connection between photography and copyright, including how to register a photo with the US Patent Office, check this upcoming Udemy course – Photography and copyright – A Complete guide for photographers.

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.

Malaysia joins the Madrid Protocol

pexels-photo-1625603.jpegWIPO reports about the accession of Malaysia to the Madrid Protocol for international registration of trademarks. The Protocol will come into force for the country on 27.12.2019. In that way, the Member States of the Protocol will become 106.

As it is well-known, using the Madrid system every applicant can register a trademark in different Member States based on one application, reducing the necessary time and money in that way.