European IP Helpdesk

Bulletin No. 3 Trademark

4

Important Things to Consider When Applying for a Trademark

Within the intellectual property ecosystem, brands are the most directly connected to the soul of companies. Patents, designs and copyrights have a limited ‘life’ but trademarks never ‘die’, unless you do not use them or do not renew them after each 10-year period. This characteristic makes them the core of the relationship between intellectual property and the business world.

In this interview with Inge Buffolo, Director of the European Union Intellectual Property Office’s Customer Department, we will look at the benefits that trademarks bring to companies and provide some practical ‘know-how’ on filing successful trademark applications.

Why should I register my trademark?

As consumers we all know the power of brands. Our purchasing decisions are clearly influenced by trademarks and the reputation that brands represent. Consequently, the exclusive use of names, symbols and slogans is a decisive business tool. As owners of a business, SMEs need to realise that the power that comes from the exclusivity of use must be protected, even though it is not required by law. So the first reason for registering is to ensure that no-one else can use your brand for the same or similar products or services, without your consent.

Another important reason for registering your trademark is to attract investors. Including information about IP assets, such as trademarks, patents or copyrights, in your business plans, will increase the possibility of securing finance. Financing institutions, business angels or banks prefer to invest their money in companies with a registered trademark that is effectively protected and enforced.

Finally there is another important advantage to registration: trademarks can work for you. Brands are

valuable intangible assets: the more your business grows, the more valuable your brand becomes. By doing a financial valuation of your brand, you can, for example, obtain a bank loan using it as guarantee, or even sell or license your brand in exchange for periodic payments known as royalties.

The registration of the names or symbols of your business as trademarks is a smart decision. It protects the reputation you have built up on the quality and value that your customers associate with your brand. It gives you the exclusive right to use your trademark and can make the difference between life or death in the business world.

What should my trademark consist of?

Marketing experts and graphic designers can advise SMEs on what a brand should look like: it should be eye-catching, consistent, adaptable to different media and markets, easily recognisable and pronounceable in several languages. In addition to this commercial vision, we must also think about the legal and administrative requirements, which are no less important.

The first thing to define is the kind of mark you want. The most common types of mark are word marks and

figurative marks. In 2017, the ‘graphical representation requirement’ was removed. That means that you can register sounds, holograms or multimedia marks as trademarks. You can find information here on the different kinds of marks and formats that the EUIPO accepts as EU trademarks.

Next, it is important to ensure that your mark is not descriptive.

To get your trademark registered it cannot only consist of a description of what your company sells. You cannot get a monopoly on words or signs that merely describe the goods or services that your company offer. Such descriptions should remain available for everybody. For example, the words “ice” or “creamy” cannot be trademarks for an ice cream company. An apple would not be a good trademark for a fruit shop, but as we know it makes a great trademark for computers.

Once you have a well-defined sign that is not descriptive, the final important factor is distinctiveness. The customers need to understand that what they see is a trademark so it cannot be commonplace or non-distinctive. For example, simple statements like “the best” or ‘be happy’ cannot be trademarks.

Be careful, IP Offices can refuse your application if it is descriptive or lacks distinctiveness and unfortunately fees cannot be reimbursed. You can find more information by consulting the EUIPO website.

What will I use the trademark for?

You cannot register a trademark in the abstract. A trademark must always be tied to the particular products or services that your company sells, and you have to specify them in your application. For example, if you have a company that sells clothing you need to specify that in your application. This determines the scope of protection of your trademark and allows the coexistence of similar trademarks registered for products which are not similar.

When you apply for a trademark using any of the EUIPO’s online application forms, you will be able to

search and choose from a list of approved goods and services. You can use our Goods and services builder‘, a tool to prepare your list before applying, or TMclass that will allow you to create lists, export them to your application, download them for future use and even translate them into all EU languages.

When selecting the list goods or services for your trademark, think carefully about what you choose and get the balance right. It is important to know that once you send the application, you cannot add any new goods or services. You need to be ambitious and think about what products and services you are likely to offer in the future. If your company now sells clothing but is likely to also sell perfume in the future you should include “clothing” and “perfume” in your application. At the same time, you need to be reasonable: the cost of filing may increase with a greater number of goods/services. If you narrow down your specification, you‘ll also reduce the risk of conflict with other marks.

Is my trademark available?

If someone else has already registered your mark for the same or similar products or services, unfortunately, it is not available.

The EUIPO offers a free trademark database, TMview, allowing you to search for similar trademarks before applying for your own. This database contains information from approximately 60 intellectual property offices from around the world, including all the EU national and regional ones, providing access to over 40 million trademarks online.

You should be proactive and search for marks that could conflict with yours. It costs nothing to search, and the information you find is crucial for your application. If someone already owns a similar trademark, they may want to oppose your application and you could lose your trademark, your time and your money. We recommend you to watch our short video on the most common mistakes made when applying for an EU trademark.