We take a look at five of the most common issues that need to be clarified for business owners who want to support their company’s international market entry with an EU trademark.
Keeping up with change in the fast-paced world of consumer society is not easy, so many business leaders can struggle to know whether the idea and the associated logo have already been conceived in the minds of others when developing a product. Uniqueness and distinctiveness is one of the essential concepts in the trademark system, and it is important to draw attention to it before starting the manufacturing process of a product and even before branding. The product that creates the main profile of the company and the name or logo associated with it can be highly distinctive not only in the domestic market but also in the European Union market, but in order to be sure of the specific product, it is recommended to register the logo, the graphic or possibly the name. Another important aspect is that a registered trademark represents value, so we can increase the value of our business or company by having a registered trademark.
When applying for a trademark, you can choose between national or EU trademarks, and this article will focus on the European trademark procedure first, but it is important to point out that both national and EU trademarks have a number of advantages and disadvantages, some of which we would like to highlight. The national trademark process will be covered in a separate article.
What is the difference between a national and an EU trade mark?
The national trademark registration procedure is before the National Intellectual Property Office, whereby, upon payment of a form and a fee, the logo will be protected in Hungary, but it is important to note that this protection is only available in Hungary. By contrast, the EU trademark procedure is before the EUIPO, which allows trademark protection to be obtained for all the Member States of the European Union by means of a single application and a single procedure. The resulting protection is uniform in all Member States and cannot be divided on a territorial basis. If the protection of an EU trade mark ceases, this will also apply uniformly to all Member States.
What is the procedure?
The procedure and cost of registering an EU trade mark is significantly cheaper than having to apply for protection in each Member State separately. In addition, when it comes to renewing a trademark, the EU trademark is a much simpler and more cost-effective option, as it is not possible to renew the trademark in each Member State, but in a single procedure. In our opinion, if the products to be marketed are to be present on the market throughout Europe, it is worthwhile to seek the protection offered by the EU trade mark rather than the national trade mark. In addition to the advantages, it is also essential to discuss the disadvantages of the EU trade mark, which are closely linked to the research process prior to the application for registration. In the event of any absolute absolute grounds for refusal on the grounds of unitary character, the whole application may be rejected. Such absolute and absolute grounds for refusal may include, inter alia, if the proposed logo is not distinctive or if it does not allow the subject-matter of the protection to be clearly and precisely identified. In such a case, the logo or name is excluded from protection as an absolute mark and may therefore be excluded from protection on the basis of the inherent character of the sign itself. In the case of a relative ground for refusal, the proposed trade mark conflicts with a pre-existing right of another person, usually an earlier trade mark.
The above grounds for refusal require a thorough trademark search prior to filing a proposed trademark application, which we will normally carry out while keeping our clients informed.
What is trademark research?
The first step in a trademark search is to assess which trademarks similar to the proposed figurative or word mark have been registered before, which is assisted by the TMview site available at the following link: https://www.tmdn.org/tmview/#/tmview TMview allows you to insert both the word mark and the proposed figurative mark into the search, which will show you whether a trademark similar to the proposed one has been filed before. Even if a similarity is found during the search, there is no need to redesign the idea already conceived, as in many cases we have already approached the proprietor of the registered trademark to obtain their written consent to file the proposed trademark, which in turn avoids any obstacles to obtaining trademark protection in this area when filing before the EUIPO. In the case of this written consent, it is important to note, however, that the trademark owner may give his consent to the trademark application free of charge or for a fee, which should always be clarified during the negotiation process. However, failure to include written consent with the application may result in a high financial risk in filing a trademark registration application.
But what are the procedural fees?
The fee for the procedure before the EUIPO is €850 for one class, €50 for an additional class and €150 for three or more classes, which is payable at the time of filing the application and is non-refundable if the procedure does not result in registration. The proprietor of a similar earlier trade mark, if consent has not been sought, will have the right to a so-called opposition during the registration procedure, which in the case of an EU trade mark means that uniformity across all Member States will be broken and an application will have to be filed in each Member State individually, which may involve higher procedural and legal costs.
Can I trademark anything in any service or product area?
In parallel to the trademark search, it is necessary to continue the identification of the class of the product related to the figurative or designation, which is assessed using the Nice Class Finder (https://classifications.sztnh.gov.hu/nice/) and to define, in consultation with our clients, one or more classes of the related product.
In summary, once an idea has been conceived, there are three important steps to follow during the process of obtaining a trademark:
- In-depth trademark research and pre-assessment
- Request for written consent in case of similarity
- Precise definition of classes of goods
Our law firm can help you by paying careful attention to the trademark registration process before, during and after the trademark registration procedure, providing full legal advice throughout the process, from trademark search to renewal.
If you feel that you need legal advice for the product and logo you are considering, please contact our office.
Authors:
dr. Szoboszlai Márta
dr. Bajcsay Gergely
Please note that the general information provided in this article is for informational purposes only and does not constitute legal advice. We cannot be held liable for any misinterpretation of the above information or for any changes in the law that may have occurred in the meantime. If you have a specific question or legal problem, we are able to provide individual advice after consultation with our office and after a full investigation of the case.
