Trademark registration in Europe

The European economy is currently the largest economy among the above continents. Therefore, many businesses want to expand their company scale to Europe and one of the most important things businesses need to do is register an international trademark in Europe. The article below from Viet An Law will also provide you with basic information about trademark registration in Europe.

Legal basis

• EVFTA Agreement;
• Madrid Protocol;
• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.

Which trademarks are capable of international registration in Europe?

Types of trademarks that can be registered in Europe are signs that can be expressed in graphic form or have the ability to distinguish goods/services such as letters, names, sounds, slogans, images, color, certain three-dimensional shapes, motion, overall commercial image, and holographic techniques.

Principles for filing trademark applications in Europe

The European Union follows the “First to file” principle of filing applications. That means that for any EU trademark, the first person to apply for registration of the mark will have priority rights in that mark over the person who applied for the mark later.

Trademark registration methods in Europe

There are 4 methods of trademark registration in Europe that customers can choose from:

Method 1: Apply for trademark registration directly in each country where you want to register for trademark protection.

Enterprises that only do business and wish to register a trademark in a number of European countries can apply directly for registration in each country. This registration is governed solely by the national law of that country.

To be able to carry out this registration, it is required that businesses must find an industrial property representative to represent and carry out registration procedures in that country. However, searching is not easy and sometimes does not achieve the desired results. Therefore, businesses can contact Viet An Law to let us become your representative, to support trademark registration in European countries more conveniently.

To save costs and facilitate the trademark management process, this method will be effective when businesses register in countries that are not part of the Madrid system, the EU Union, or the Benelux Union.

Method 2: Apply for trademark protection through the community trademark system to register trademark protection in all EU countries.

European countries have developed a standard legal system that applies to all member countries. In the light of that, trademark registration is also through a separate system, completely independent of countries in the community. Trademarks registered through this system are called community trademarks also known as CTM (abbreviation for Community Trade Mark).

When registering a trademark through the CTM registration system, the trademark owner only a single trademark application must be filed, the trademark can be protected in all EU countries. However, if a trademark is rejected or invalidated in one member state, it is also invalidated throughout the community. At this time, if the owner still wants to register the trademark in other countries in Europe, he or she can convert the CTM application into multiple separate applications for each country. The filing date is still counted as the CTM application filing date.

Because the CTM registration system is independent of each country’s own registration system, trademark owners are free to file a CTM trademark application, a national application, or both. CTM trademarks and national registered trademarks can coexist.

Method 3: File a trademark registration application by region

In relations with Vietnam, Belgium, the Netherlands, and Luxembourg are all major trading partners and investors. Therefore, when Vietnamese businesses expand their business market to the Benelux Union (including three countries: Belgium, the Netherlands and Luxembourg), they will have optimal policies and great competitive advantages.

The Benelux Alliance allows trademark owners with just one application to register a trademark in all three countries: Belgium, the Netherlands and Luxembourg. The application will be submitted to the Benelux Office of Intellectual Property (BOIP).

Trademark protection title is valid for ten years from the date the application is filed. Trademark owners can renew their trademarks once every 10 years.

Method 4: Register a trademark to Europe via the Madrid system

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. Clients only need to submit one set of international trademark registration documents and pay the fee to register for protection in 130 countries in the system (the number of countries participating in this Madrid System is updated as of June 2023).

To register an international trademark through the Madrid System, Clients can use the basic application in Vietnam and also designate another country (region) as a member of the system.

There are currently a total of 43 European countries that have joined the Madrid System, including England, Iceland, Norway, Sweden, the Republic of Moldova, Russia, Belarus, Ukraine, Liechtenstein, Monaco, Switzerland, Bosnia and Herzegovina, Macedonia, Montenegro, Serbia, Albania, San Marino; The 27 member states of the European Union (EU) include Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Croatia and 3 member states of the Benelux Union including Belgium, Netherlands and Luxembourg. Member countries in the European Union are all members of Madrid, so after submitting an application, the establishment in Vietnam can designate one or more member countries of this Union.

With the above methods, trademark owners can conveniently and effectively apply for trademark registration in European countries to protect their intellectual property through the procedure below.

Dossier for registering trademarks in European countries

• Application for trademark registration (a request for application).
• Information about the trademark owner (a correctly identified owner).
• A description of the mark and a list of goods/services of the registered trademark (a clear representation of the mark and a list of goods and services).
• During the examination of the application, if the application is determined to have errors or someone has to oppose the application, the European Union Intellectual Property Office (EUPIO) will send a notice and request amendments/responses to the application within 02 months. In case the amendments/responses are not accepted by the registration agency, the trademark application may be canceled.
• In case there is no objection, and the mark you registered is eligible to become a trademark, the trademark registration agency will announce that you have applied the mark to the indicated goods/services. This is not yet a publication of the trademark registration. The purpose of this step is to widely publicize the considered registered trademark for everyone to know and receive the object (if any) to this registration.
• After the trademark is published, in case there is an objection from a third party, the opposing party has 3 months to object. In case of a successful objection, the mark can no longer be registered as an EU trademark but can be converted into a national trademark.
• In case no one objects or the object is unsuccessful, the trademark will be registered in the EU.

Above is Viet An Law’s advice on the process and procedures for trademark registration in Europe (EU). If customers have any questions, please contact Viet An Law for the best advice.