How to register a European trademark: A Complete Guide | Ventsi Stoilov | Skillshare

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How to register a European trademark: A Complete Guide

teacher avatar Ventsi Stoilov, Intellectual property manager, lecturer

Watch this class and thousands more

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Taught by industry leaders & working professionals
Topics include illustration, design, photography, and more

Watch this class and thousands more

Get unlimited access to every class
Taught by industry leaders & working professionals
Topics include illustration, design, photography, and more

Lessons in This Class

35 Lessons (1h 35m)
    • 1. Welcome to the class

      1:29
    • 2. Section 1 - Introduction

      4:37
    • 3. Class content and structure

      1:45
    • 4. Section 2 - What are European trademarks?

      0:19
    • 5. What can be a European trademark?

      2:51
    • 6. What types of European trademarks exist?

      3:10
    • 7. What kinds of European trademarks exist?

      1:10
    • 8. Who and how can register European trademarks?

      0:48
    • 9. Trademark protection through registration or use

      1:14
    • 10. Classify trademark goods and services

      2:31
    • 11. What is the term of protection of European trademarks?

      0:17
    • 12. How much does it cost to register a European trademark?

      1:07
    • 13. Section 3 - Trademark pre application stage

      0:23
    • 14. Requirements for registration of European trademarks

      2:09
    • 15. Trademarks that are devoid of any distinctive character

      5:55
    • 16. Descriptive trademarks

      4:05
    • 17. Customary signs or indications and shapes or other characteristics

      3:16
    • 18. Trademarks contrary to public policy, deceptive trademarks etc

      4:54
    • 19. Acquired distinctiveness through use

      1:33
    • 20. Relative grounds for refusal of EU trademarks

      3:33
    • 21. Trademark similarity assessment

      3:19
    • 22. How trademark oppositions can be avoided?

      8:16
    • 23. Section 4 - European trademarks registration process

      0:13
    • 24. European trademarks registration

      1:15
    • 25. Filing a trademark application with the EUIPO

      10:32
    • 26. Trademark representative, examination, publication, opposition, registration

      4:31
    • 27. Section 5 - Maintenance of European trademarks protection

      0:10
    • 28. How to maintain trademark protection?

      3:36
    • 29. Monitoring for new identical or similar trademarks

      2:51
    • 30. Renewal of trademark registration

      1:48
    • 31. Invalidity and revocation of registered EU trademarks

      2:48
    • 32. Section 6 - Enforcement of European trademarks

      0:17
    • 33. What is trademark infringement?

      1:38
    • 34. Call a trademark attorney and enforce your rights

      4:59
    • 35. Section 7 - Conclusion

      1:43
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About This Class

Welcome to the class "How to register a European trademark: A Complete Guide ".

This advanced class will help you to learn how to protect European trademarks. 

Protection of such marks is really important if you want to do business in the EU, a market which is considered to be one of the biggest in the world with a population of almost 500 million people and an annual GDP of 15 trillion dollars, representing around 1/6 of the global economy.

Operating without a registered trademark in the EU could be risky because of the possible conflicts with already registered trademarks and the accompanying expensive and time-consuming legal proceedings.

European trademarks give a significant advantage to every business. They cover the territory of the European Union and all of its 27 Member States. This means that you don’t need to protect a trademark in every one of these countries but only to register one EU trademark. In this way, you will save time and money.

In this class you will learn:

  • What European trademarks are?
  • Types and kinds of European trademarks.
  • How does this protection arise?
  • What are the requirements for protection?
  • How and where can you apply for such a trademark?
  • What is the registration process?
  • For how long will this protection be valid?
  • What will cost you to register a European trademark?
  • And some rules on how to maintain this protection in the time.

Meet Your Teacher

Teacher Profile Image

Ventsi Stoilov

Intellectual property manager, lecturer

Teacher

Hi, I am Ventsi, an intellectual property expert with more than 12 years’ extensive experience in the field of management and protection of trademarks, industrial designs, internet domain names, copyright, etc.

As an academic background, I hold both Bachelor’s and Master’s degrees in intellectual property management as well as a certificate by the World Intellectual Property Organisation which is part of the United Nations.

I have a corporate background in managing an intellectual property portfolio as well as I've gained significant expertise dealing with different corporate IP projects on a national and international level.

I am also a University lecturer in the field of intellectual property management for more than 7 ye... See full profile

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Transcripts

1. Welcome to the class: Welcome to the class how to register a European trademark. In this class, you will learn what European trademarks are, why they're important, what types of marks exist, how to register them, and how to enforce your rights in case of an enrichment. Hi, I invented and intellectual property manager enter university lecture. By the end of this class. You know what European trademarks are and how to register them. You might be wondering why this is important for your business and how exactly it can help you register in European trademarks can be a real advantage for your business project because every new mark covers the territory of all EU member states Market, which is considered to be one of the biggest in the world, with a population of almost 500 million people and annual GDP of $15 trillion, representing around 1 sixth of the global economy. The market is very competitive and it is always recommendable when you launch a new brand to see it's registration in advance. In order to safeguard your market position and turnover. By taking this class, you will learn what the registration process of European trademark sees. What are the requirements for registration are, what the thermal protection is, how much it will cost you to reduce the research trademarks and much more. These costs is suitable for students of all levels. Thanks for your interest in the class, and I hope that it will be a great help to you. 2. Section 1 - Introduction: Hi and welcome to the class how to register European trademarks. My name is venting and intellectual property manager and the university lecture with a passion for managing and teaching about different intellectual property rights, including trademarks. In this course, I will do my best to teach you what the so-called European trademarks are and how you can register them if you do business in the European Union. Probably you ask before anything else why you should care about these trademarks? The reason why European trademarks are important for every business is that their original marks, which means that they covered the territory. Oh, 27 EU member states. This means that with only one trademark application, you can receive protection for the entire UK, which is the biggest and most lucrative trade and Political Union in the world. If you do business in the EU or you consider doing that in the future, entering this market with a brand requires a good preparation. The reason from our 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 the other hand, as a general rule of thumb, every trademark is varied only for the territory where it is registered. 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 the owner of earlier already reduced rates, 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'll give you one simple example. Let's say we have a US company entering the US market for sport shoes with a brand that is registered in the US only. The fact that this company has a US market doesn't mean that this protection we will cover European Union automatically. The company needs to fall trademark application for every single country where it wants to operate. For the EU, this can happen based on one application that you cover the entire union, instead firing 27 separate applications for every country. What are the risks if the company skip this step and starts using his brand without initial checking, what is the situation and tell without filing a trademark application? Well, there are two main possibilities that can occur. The first one is to start using the relevant parent without any issues. That is to say no one else has a similar mark for shoes in the UK, probably you would think that the source o problems, not at all. Even without initial conflicts, if you, Mr. Register a trademark for your brand, it is possible for someone else to copy our brand and to register it for the same products. Bear in mind that in the EU, protection arises based on a registration. In contrast with the US where it arises based on a real market use. If the 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. The second option is 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 trademarking creature and its business in the UK can be jeopardized because all of this, it is quite important in case you want to operate in the UK to do your homework in advance, which means to conduct a preliminary trademark search, whether they are earlier, similar marks ends too far trademark application in time. In this class you'll learn the most essential moments related to European trademark protection, including what can be registered as a European trademark. How does this protection arise? What is the difference between a European trademark, international trademark in a single member state? What are the requirements for protection? What is the procedure for registration? How can you register it and you trademark? What we will cost you to register it's such a trademark and some rules how to make him this protection in the time. Stay with me. And by the end of this class, you'll gain the necessary knowledge how to deal with European trademarks. 3. Class content and structure: The class is built with the purpose to acquaint you with the most essential aspects of the European trademark protection. It is divided into seven sections as false, section 1, introduction section to what our European trademarks. Here we will discuss what exactly a European trademark is, what types and kinds of trademarks exist? What is the thermal protection? Who can apply for research trademarks? How much does it cost, et cetera, section tree, trademark prayer application stage, we will discuss what are the requirements for registration of European trademarks are. In addition, we will talk about what trademark assessment is and how trademark position to be avoided section for European trademark registration process, we will go over the registration process in its main stages. What's more, you will learn how to file an EU trademark application on your own. Section five, maintenance of European trademark protection. Here we will talk about post registration activities that every trademark owner should pay attention to. This includes creating a proper trademark archive, monitoring for new, identical or similar trademark applications, and renewing of the trademark protection section six, enforcement of European trademarks. We will discuss the basics of trademark law enforcement in the European Union, as well as what is invalidation and revocation of trademarks, Section 7, the last station is a short conclusion which summarize some of the highlights of the class, as well as providing you with a small gift in the form of a PDF file where you can find links to the European Intellectual Property Office and some helpful information regarding the protection of European trademarks, enjoyed the lectures. 4. Section 2 - What are European trademarks?: In this section, I will explain what a European trademark is, what types and kinds of trademarks exist and their term of protection. In addition, we will discuss who can reduce research trademarks and how easy you can classify the goods and services that you need to specify in your applications. Enjoy the lectures. 5. What can be a European trademark?: What can be a European trademark is a general rule of thumb. Every trademark is valid only for the territory of the relevant country where it is, register it from their point of view, the European trademarks are special trademarks because they covered the territory of all EU member states. This is possible because the EU is a political and economic union of countries sent as such, it has its own legislation, including one related to intellectual property rights, in particular, trademarks. The European trademarks are similar. The federal trademarks in the US where there are state trademarks as well for the individual states, all this means that in the EU, there are two layers of trademark protection. One on a national level in every single country and one on EU level through the European trademarks. Both types of trademarks can existing cutaneous and can overlap. For example, you can register it x trademark in Germany for shoes and to register the same trademark is in your trademark. In addition, the difference will be that the German trademark we will cover only Germany, whereas the EU trademark we will cover the territory of 0 member-states definition and you trademark may consist of any science in particular words including personal names or designs, letters, numerals, course, the shape of goods or of a packaging of goods, or sounds provided it, such as science, are capable of distinguishing the goods or services of 100 taking from those of other undertakings, and being represented on the register of European Union trademarks in a manner which enabled the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its creator. We can summarize two important moments out of this definition. First of all, if you want to register a European trademark, the relevant sign has to be distinctive. This means that the sign must not describe the goods and services which it is a register it for. For example, you cannot register a wordmark bread for product breadth because this word is so generic and has to be left for use by everyone. The second key moment in this definition is that the Euro sign has to be presented in a way in which it can be perceived as a trademark sign. This is relatively new requirement in the past, the requirement will that the sign should be presented graphically. But with the advance of technologies nowadays, many things can represent a trademark. For instance, coal grounds, motions, sounds, CSF. 6. What types of European trademarks exist?: What types of European trademarks exist? There are different types of trademarks which are recognized in the EU. In general, you can choose between the following types of European trademarks. Word marks, the word name under which a product or services known on the market. Example, a wordmark, Adidas, Nike, Apple, Samsung, etc. Work marks are just read only as words without any graphics. These are the strongest trademarks because they do not depend on any graphical patients, colors, etc. Figurative marks consist only of figurative elements without words. For example, Nike's logo, Adidas logo, merchandise, photos, etc. Combined marks. They combine both Word and figurative elements. For example, Nike, Adidas, Disney, et cetera. Shaped marks. Day represents the form of the product, for example, Coca-Cola bottle or a hierarchies car design, shaped marks containing word elements. These are three-dimensional trademarks that contain a world product. For example, the tubular on trademark, it covers both the shape and the word part. Position marks. It consists the specific way in which the mark is placed or a fixed to the product. For example, these GMO project sneaker is registered as the position trademark, which means that the protected elements is only that one in gray. Potter marks consists exclusively of a set of elements which are repeated irregular. For example, these wispy term trademark, where the repeated element is the letters L, V. Color marks. In exceptional cases, even a single core or a combination of covers can be a trademark. This is the case when people recognize it, product or service by its cover. For example, a trademark owned by Deere and Company for characters and a core marked by defining some marks and advertising jingle is sometimes so well known that when people hear it, they immediately know what it refers to. In such cases, the sound can be registered as a trademark. For example, Nokia connecting people, melody, holograms. These marks consists of elements with who graphic characteristics, motion marks, a trademark consisting of our extends to a movement or a change in the position of the elements of the mark. For example, a motion mark by Sony mobile. Multimedia marks, they consist or extends to the combination of images and sounds. For example, a multimedia marked by cowardice Hagar. Bare in mind that you can register a trademark for any of these types, as well as a combination of them. For example, you can register your brand-name as a wordmark, and after that it is a combined and figurative mark with separate applications. This will increase its protection because you will protect all elements of the brand. 7. What kinds of European trademarks exist? : What kinds of European trademarks exist? Individual, owned by a nature or legal person, co-ownership owned by more than one nature or legal persons. Certification marks indicate the existence of an accepted product standard and a claim that the manufacturer has tested the product to verify compliance with that standard. For example, this sign indicates that the goods are sold within the European Union meet certain requirements for quality and safety. These marks cannot be used by their owners, but only by companies that need the standards set by the trademark owner. Collective marks is owned by an organization, used by its members are to identify themselves with a level of quality or accuracy, geographical region, or other characteristics set by the organization. A corrective trademark can be used by different traders rather than just one individual, provided that these traders belong to the same association. For example, a corrective brand of the Association of producers of beer in Belgium. 8. Who and how can register European trademarks? : Who and how can register European trademarks? European trademark can be registered by individuals and companies around the world. However, if applicants do not have a principal place of business or a real and effective industrial or commercial establishment in the EU, they must be represented by a professional representatives based within the EU. This means that applicants outside the European Union have to use European trademark attorneys when they want to register such trademark. The only exception here, he said that such applicants can fall you trademark applications on their own. However, for the rest of the registration procedure and the community width or the European Intellectual Property Office, they need to appoint a trademark attorney. 9. Trademark protection through registration or use: Trademark protection through registration or use. In some countries like the US, trademark protection arises based on use in commerce. These literary means that even without a registration, trademark owners in the US have some protection over there, Marx, although the registration gives more option in case of enforcements of rights, one of the requirements to register a trademark in the US is to indicate the date of first used or at least intention to use the mark that is applied for. In the case of European trademarks, there is no requirement for a real market use the sign in order to receive protection. The main principle for Marx is first to apply. You can apply for such a trademark even though it has never been used before. However, if you don't use your European mark four or five consequently hears, every interested party can try to revoke it based on non-use. The reason for this option is that intellectual property monopoly is possible, but under some limitations, you can imagine that otherwise there will be millions of registered trademarks that are not used in reality, serving to block other market participants from using them. 10. Classify trademark goods and services: Classify trademark, goods and services. Every trademark is protected only for the goods and services specified in its application. These goals and services are grouped into classes defined under the so-called nice classification for the purpose of registration of trademarks. These nice classification is adopted from most of the countries around the world and it is valid for a European trademarks to the classification has 45 classes, 34 of which are for goods and services. One example for classification of goods and services, the heading of a nice class. 29, meat, fish, poultry and game, meat extract, et cetera, or 35, advertising, business management, business administration, administrative activity, etc. It should be noted that it is possible for the existence of identical registered trademarks, but for different classes of goods and services. This means that you have to carefully select the Cloud that you need your trademark for. Because if you missed to mention it, your trademark protection, we will not cover the goods and services associated with disgust and somebody else can try to register it at the same mark for this class. To identify which classes correspond to, to your goods and services, you can use the tm class tool offered by the European Intellectual Property Office. The link to it is attached to the lecture notes. Let's open this web tool. First of all, selected the language in which you will write the name of your goods and services after that, type them in the input healed. You can classify only based on one goods and services. That is to say, for every one of them, you need to do separate classification. Let's try to classify shoes. When we type this product, Enter, click on Search will be presented with the relevant, in this case, cos 25. As you can see, some other classes can appear to like 18, but in this case, they concern doc shoes. Usually the first class on the top is the most relevant unless you need a specific type of product. So in that way, you can classify all goods and services. The classes that you get have to be specified in the trademark application. 11. What is the term of protection of European trademarks?: What is the term of protection of European trademarks? Trademarks are valid for 10 years. You can renew their protection indefinitely for following periods of ten years for as long as you like, provided that the necessary patent offices fees are duly paid. 12. How much does it cost to register a European trademark? : How much does it cost to register a European trademark? In case you applied for a European trademark online using the IPO website, the cost is €850, which he covers one nice class of goods and services. If you fail your trademark application on paper, the fees or €1000 for one class, again, for a second class, you need to pay an additional €50. And for every possible that a €150, you can find a link to the fees and payments page on the IPO website. One easy way to determine how much the application will cost you is to use the IPO fee calculator. It can be found on the fees and payments page. So let's try it. Click on Calculate your fee. A window will pop up from there type for how many nice classes of goods and services you want your trademark. For example, I will type three classes, the fees at €1050 by default, these concerns and online application, but if on paper the feed becomes €1200. 13. Section 3 - Trademark pre application stage: Trademark application stage. In this section, you will learn what is necessary before a trademark application to be held. How acquaint you with the requirements for registration of European trademarks that have to be bearing in mind in the brand-building process, which will help you to select a trouble-free brand-name that you have better chances for successful registration. Enjoy the lectures. 14. Requirements for registration of European trademarks: Requirements for registration of European trademarks. There are two groups of requirements that have to be taken into account when it comes to registration of trademarks. The first one is absolutely grounds for refusal. That is to say, science that cannot function as trademarks by their nature, the IPO will check whether your application for a trademark, compliance with these requirements or not. If there is a problem, you will receive a refusal. The second group is requirements on relative grounds. According to the wall, you are prohibited to register and use a trademark that is identical or similar to someone else's already registered its trademark or other intellectual property rights for identical or similar goods or services. This means that if you file such a mark, you can face a position by owners of earlier rights and your trademark. So we will not be registered and absolutely grounds for refusal of EU trademarks. These grounds are stipulated in article seven of regulation number two thousand and seventeen hundred, ten hundred and one of the European Union, if the mark you want to file an application for a represents a sign prohibited to be a trademark under this regulation, you will receive a refusal by the IPO, the absolute grounds for refusal, our CFO, signs which do not conform to the definition of European trademark. This means that your trademark must satisfy these three conditions. It must be assigned. That is to say each should be understood as a particular sign, not something vague. It must be capable of distinguishing the goods or, and services of 100 undertaking from those of others. This means that the sign must have the quality to surfaces source of greater region. It must be capable of being represented on the register in a way that allows the competent authorities and the public to determine the clear and precise subject matter of protection. This means that you are assigned has to have a particular form, a word, name, three-dimensional shape, etc. 15. Trademarks that are devoid of any distinctive character : Trademarks that are devoid of any distinctive character. In this case, the relevant sine cannot be perceived by consumers as a source of trade region that relates to a particular undertaking. This is a crucial requirement that has to be bear in mind. Many times, companies tried to register trademarks that have a specific meaning, but if this meaning describes the product which it will be used for, consumer will not be able to regard it as a distinctive sign of a particular manufacturer. Such signs will be refused for registration as trademarks. There, words that are frequently used by everyone can lose their capacity to distinguish goods and services. For instance, you cannot register echo a wordmark for consumer products such as food, cosmetic, et cetera, because it means a logical, in other words, describes the quality of the product. Another example is with the letter C used for fruits. It cannot be registered as a trademark because it can relate to vitamin C, for example. Non-distinctive slogans that conveyed directly simple or descriptive meaning cannot be trademarks. For example, the slogan, drink water, not sugar is quite banner. It is merely good console, but it is unlikely customer, we will see it as a particular trade sign. Simple geometric circles, lines, rectangles, or common pentagons are unable to convey any message that can be remembered by consumers and we'll accordingly not be seen by them as a trademark. For example, this sign, it is too simple, even in its overall impact reminds that of a simple geometric shape that is not capable of transmitting a trademark message. Another example is this one. An image of a cow for milk products is considered as not distinctive. On the other hand, creative combinations of such forms can be a trademark. For instance, design. It creates an illusion of overlapping triangles. Typographical symbol such as a full stop comma semicolon, quotation mark or explanation marker will not be considered by the public as an indication of region. For example, this sign is not a protectable for foodstuffs and beverages because it indicates clearly that there is a favorable cost-benefit ratio as discounts, etc. Simple pictograms. They are basic and an ornamented signs and symbols that will be interpreted as having a purely informational or instructional value. For example, the sign for emails, non-distinctive shaped marks, as a general rule of thump products shapes can be registered as trademarks, but only if the shape is distinctive otherwise the application will be refused. For example, this shape Mark was refused because it is a variant of a common shape of this type of product, flashlights. Another example is for this bottom shape, the relief at the top is not sufficiently striking, but will be perceived as a merely decorative element. As a whole, the combination of the elements is not sufficiently distinctive, so it cannot be a trademark. Non-distinctive position marks, they represents a specific way in which the mark is placed on the product. If they are not a distinctive, the protection will be refused. For instance, this mark consists for the position of the circular and rectangular hertz on our watch face. It is considered as not independent or distinguishable from the forum or design of the product itself. And that the position, if the elements are, we're not there sustainably different from other designs on the market. An example of a distinctive position Mark is that one of the shoe, the figurative element is distinctive enough. The rest of the shoe, presented with the dotted line is not part of the protection scope. Non-distinctive pattern marks consists exclusively of a set of elements that are repeated regularly, if not a distinctive, these elements cannot be registered. For example, these patterns for fabric and cause is simple and complex and because of debt, could not attract consumer's attention. So it is insufficient to indicate the source of original goods or services. On the other hand, this pattern is accepted as distinctive because of the unique combination of elements, non-distinctive marks, single core will be refused as a trademark. In some limited cases, it is possible to be registered, but only if the applicant proves acquired distinctiveness. This means evidence that the customers connect to the core only with the particular applicant for the relevant goods or services. This requires a long lasting market, US and solid advertisement at least, for example, this color mark is registered by Tiffany because the company proved the real market. You've seen 845 supported by many advertisement campaigns. Color combination is more likely to receive protection, but again, it requires distinctiveness, inherited, or acquired. For instance, this color combination is to register it as an EU trademark by Deere and Company because they proved that customers identify these cores with their tractors. Non-distinctive marks in order to receive protection, sound marks have to be distinctive and memorable by the customers and indicating cratered region. For instance, the sound consisting of two nodes is, consider it to be too simple and banner, that is to say it cannot be perceived as a trademark. On the other hand, jingle like sound. Sequence, are capable of identifying goods and services. 16. Descriptive trademarks: Descriptive trademarks. Your trademark will be refused if he described the goods or services for which it is applied for. This is the case where the sine provides information about the quantity, quality, characteristics, purpose, kind, or size of the goods or services. You cannot register a wordmark bank for financial services or fresh for holster, because they describe the nature or characteristics of the products are descriptive. Sign can be a combination of descriptive words will be refused. For example, Ecuador, four doors subject. And not only that, the product is adore, but that it is made of eco-friendly materials. Misspelling of descriptive words will be refused. The meaning is clear. For instance, liquid is understood immediately as the word liquid. Some slogans that convey information about the product or service characteristics. We were accused, for instance, beauty to resist in relation to paper, paper goods, letter, All footwear, etc, means that the goods are our manufacturer to West and are therefore tough and resistance to wear and tear. Geographical terms in case that consumers perceive her geographical term as a designation of origin of the goods or services, or that some characteristics are due to this origin. The mark will be refused. For example, me 10 will be refused as a trademark for quoting or Switzerland for banking services or watches. Sometimes if the geographical place does not associate with the relevant goods or services, it can be protected, for instance, Miami for quotes. In other cases, however, it could be a problem even without a direct association with the geographical place. For example, whiskey with a trademark, Brazil. Brazil is not so popular as a whiskey producer. This name cannot be registered as a trademark for these good, because Brazil can surface a designation of original such products and has to be left for use by every producer in the country. Descriptive terms where a sign consists exclusively of her word. Data describes what may be the subject matter or content of the goods or services in question. It, it's registration will be refused. Example for descriptive terms that cannot be registered as trademarks are Paris for travel guide, history for Education, Committee for television programs, grain for food, Herald, Journal for magazines. Names, of course, a trademark consisting of a color name will be refused when describing some of the basics of the covered goods and services. For example, ceramic white for smartphones describes the material. The phone is built on. Combinations of names of countries with a number indicating a year in most of the cases such trademark. So we were healed because it can be perceived as describing can event happening that year in the relevant place. For example, Germany 2006 for sport events is not a wild because it'll describes an event that happened in this year. It is descriptive. Penta cannot serve as a source of great region to distinguish products of one manufacturer from those of another. Descriptive, figurative trademarks, there will be refused to give her a day consists exclusively a basic nature of form that is not a significantly different from a total life portrayal that serve to indicate the kind, intended purpose or other characteristics of the goods or services. For example, design cannot be registered for goods targeting dogs. It can be registered only if it is combined with other distinctive elements or for goods and not related to dogs. 17. Customary signs or indications and shapes or other characteristics : Customers signs or indications. It is not possible to be registered as trademarks. Signs that consist exclusively of words or indications that have become customary in the current language or in a bonafide and established their practices of the trade at the relevant point in time. For instance, the sign is not protectable because is in identical to the international safety symbol, known as high-voltage symbol. Shapes or other characteristics with an essentially technical function, substantial value or resulting from the nature of the goods. The European trademark wall exclude some shapes from trademark registration. The reason for a disease to prevent attempts for indefinite protection of designs or inventions as trademarks bearing in mind that every European market is varied for a period of 10 years, but can be renewed for indefinite following periods of ten years. In contrast, patents and designs are protectable up to 25 years. Such shapes cannot be registered even if an acquired distinctiveness is demonstrated. Let's go over them, giving some examples. The shape or another characteristic that results from the nature of the gods themselves. This shape cannot be a trademark because it is not possible for TIBCO product characteristics to be monopolized by one market participant. For example, the shape of a banana cannot be a trademark for bananas as a product. The shape or another characteristics of goods that is necessary to obtain a technical result. This happens when all the essential characteristics of a shape perform a technical function. For instance, the Lego bricks performed a technical function, according to the European Court, it is used as a gain for kids that are beautiful objects by fitting bricks into each other. The Shaper and other characteristics of the goods that gives a substantial viral to the goods. In this case, the shapes represent the characteristics that has some commercial or other value for customers. The idea here is that customers should buy the product is indicated by its shape because it is a science of trade Origen, not because it provides them with a commercial or artistic or other types of Vireo. For example, these wild speaker, the General Court of the European Union, stated that the shape for which registration was South revealed a very specific design and that it was an essential element of the applicants branding, which increased the appeal of the product and therefore its value. The court also noted that it was apparent from the evidence, namely extracts from the distributors websites and online ocean or second-hand websites, that the aesthetic characteristics of the shape or emphasized there first and that the shape was perceived as a kind of pure, slender, timeless sculpture for a music reproduction, which made it an important selling point. 18. Trademarks contrary to public policy, deceptive trademarks etc: Trademarks contrary to public policy or acceptable principles of morality. Names that are contrary to public policy or to accepted principles of morality are excluded from protection as European trademarks. For example, a mark screw, you cannot be registered because a substantial proportion of ordinary citizen in Britain and Ireland would find the words cruel, offensive, and object, objectionable, deceptive trademarks. The IO provides that marks that are of such a nature as to deceive the public, for instance, as to the nature, quality, or geographical region of the goods or service cannot be registered. For instance, you cannot register it a mark, walk 23 in class five walk tos, the nature of the sign would immediately lead the relevant customer to believe that the product in question, lactose does not contain any lactose. It is clear that if the product being marketed under the sign of D23 were actually lactose itself, them the mark would be query, misleading. Trademarks in conflict with flux and other symbols, you cannot register as trademarks. Signs that represent our Mario, bearings, flux, and other state emblems, science and hallmarks are indicating control and warranty adopted, adopted by them as well as our Mario bearings flux, other and blames the abbreviations and names of inter-governmental organizations. The only option for a registration is if the competent authority grants in authorization, for example, in this case, the IPO, consider it that the Swiss franc is incorporated into the trademark or because of which, it cannot be registered. On the other hand, does trademark is considered a wild for registration, although the sign includes the UK hawk, it is represented in other course and with a different sterilization. Trademarks in conflict with the designations of reaching enter geographical indications, you cannot register as a trademark, geographical indications center designation of origin. Their protection, although similar to this of trademarks, is separate. This designation send indications are protected the names of the products so that originated from specific geographical regions and have specific qualities or enjoy reputation linker to the production territory, it's nature, human factor, etcetera. Such indications that can be used only from producers, from the relevance territory's. For instance, you cannot register as a trademark champagne for wines. Trademarks in conflict with a traditional terms of four wines. Traditional terms for wine are not the registrable as trademarks if they're register, it is such a traditional terms in the EU. These terms do not constitute intellectual or industrial property rights like geography indications, there either used in addition to the reference to geographical indications or provide information to customers on the prediction method, quality, core, or type of a place or a particular event linked to the history of the wine. For example, the sign is not the registrable, are all the goods in its application. Because chateaux is a historical expression related to a type of area and type of wine and is reserved for whites, the originating from an estate that actually exists and has the exact word in its name, the relevant public. We will link the term chateaux in the sign with the traditional term chateaux. Trademarks in conflict with the traditional speciality guaranteed, traditional specialties guaranteed THE are similar to geographical indications but not the entire day protects traditional methods of production and recipes by helping producers of traditional products in marketing and communicating the value adding attributes of their traditional recipes and products to consumers. For example, a trademark for human milk, Baran, is refused by the IPO because it covers registered TAG for milk, human milk. Trademarks in conflict with earlier plant variety, the nominations then varieties are protected in the EU. From that perspective, you cannot register a trademark which is identical to our plant variety, the nomination for the goods for which the latter is protected. For instance, a trademark for Ruby for poems are products made, made out of clumps will be refused because there is protected plant variety determination for Ruby for pumps. 19. Acquired distinctiveness through use: Acquired distinctiveness to use. There are some exceptions from the absolute grounds for refusal where trademark can receive protection. In the case of non-distinctive trademarks, descriptive trademarks and customer signs or indications, they can be registered. Their applicant proves that because of extensive US customers identify these signs only as related to the particular applicant. This design has become capable of distinguishing the goods and services of one undertaking from those of other undertakings. This is the so-called secondary distinctiveness. To prove it, the applicant hazard to submit the different pieces of evidence such as a market share turnover, vigorous advertisement materials, market surveys, advertising investment figures, and reports, media coverage rewards, etc. The evidence sermons be clear and convincing. For example, the combination of the color is green and yellow was found to have acquired distinctiveness true use, because it refers to the machines manufactured by Deere and Company, the means of evidence, there were a number of statements there from professional associations according to which such combinations refer to to agriculture or machines manufactured by that company. And the fact that the company had been using the same combination of colors on its machines consistently in the EU for a considerable time period to 1996. 20. Relative grounds for refusal of EU trademarks: Relative grounds for refusal of your trademarks. Apart from the absolute grounds for refusal of trademark, their relative grounds to, in this case, owners of earlier rights can file a positions against a later trademark that is identical or similar to their rights. It is important for every trademark applicant to be aware of this possibility in order to try to avoid it. Otherwise, they invested time and money for a trademark can be wasted. The best way to do this is true, the brand building process, because it will allow the applicant to change its brand if necessary, and to avoid the later legal conflicts, we will talk how oppositions can be avoided Later on, a position against the European trademark applications can be found within three months after their publication in the US IPO official BU written. The IPO does not examined potential conflicts with other trademarks ex official, however, it does carry out a trademark clearance search. You IPO, we we inform owners of earlier trademarks for new identical or similar applications. All of this means that it is likely such owners to learn for every new trademark application that is one. A position can take months, or in some cases, even years to be solved, bearing in mind that the IPO decisions can be appeared before the European Court. That's why it is crucial for every applicant to be sure in advance that he's chosen brand will not increase rights of someone else. The grounds for opposition can be open, opposition by the appropriator of an earlier trademark. The trademark applied for a show not be registered if it is identical with the earlier trademark and the goods or services for which a registration is applied for identical with the goods or services for which the earlier trademark is protected. If because of its identity with or seniority to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks. There exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected. And earlier trademark means such one registered before the date of the new application for registration. These marks can be you trademarks, national trademarks register it in a member state. Trademarks registered under international arrangements which have effect in a member state. Trademarks registered under international arrangements which have effect in the EU as a whole application for such trademarks. Mentioning so far, trademarks which are well-known in a member state and non-registered its trademark or of another sign used in the course of trade of more than mere wacko significance with earlier priority date, an earlier trademark which goods or services are not similar to those of the new trademark application, where these earlier Mark has a reputation in the UK or in a member state and where they use without due cause of the trademark applied for Woods, take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trademark registered with geographical indications, designations of region, or applications for them. 21. Trademark similarity assessment : Trademarks similarity assessment. So if there is an opposition against the European trademark application based on an earlier identical or similar mark for identical or similar goods or services where a likelihood of cohesion between the science is possible, these trademark will be refused. In brief. A likelihood of confusion means that the public directly confuses the conflicting trademarks. That is to say, mistakes D1 for the other, the public makes a connection between the conflicting trademarks and assumes that the goods services in questions are from the same or economically linked undertakings, likelihood of association. When it comes to identical marks for identical goods and services, the assessment can be easier. For example, an earlier trademark, NYC for footwear, enter later trademark application for a night for footwear by another company. In this case, the later mark will be refused. On the other hand, in case of similar trademarks for similar goods or services, the assessment can be much more tricky. Such assessment requires in-depth legal knowledge regarding the EU trademark registration and practice, as well as the case study by the European Court. For instance, these two trademarks are considered similar I how-tos in different fonts and colors. They are similar from a visual, phonetic, and conceptual point of view for similar services in class is 35, 39, 41, 42, and 43. By the way, many people believe that if they change later in the trademark, this will make it dissimilar with another registered mark. In most of the cases, this won't work. One letter difference is not enough. For example, an early Mark added us for shoes is similar enough to a later Mark are the pass for footwear, the letter T is not enough to overcome the seniority. One example for the similar marks is a combined trademark, Excel for alcoholic beverages and Excel for the same goods, the conflicting collectors Excel half a wall degree of distinctiveness for the goods in question they sell is an abbreviation of extra large size used within the European Union for the goods in question and namely alcoholic beverages, the public is likely to be associated with an extra quantity of a drink. The word elements Toro is distinctive. The marks are visually and phonetically similar, and there is only a weak conceptual similarity, the likelihood of confusion is excluded. However, sometimes not so distinctive signs can stop later marks if they have a strong reputation in the market. For example, these two marks, meaning and mini cargo vehicles, the earlier trademark is reputed for cars and accordingly, it has enhanced distinctive character in the UK. Thus, for the relevant public in the UK, the contested the signs will be perceived as the widely known trademark meaning in combination with the descriptive word cargo. And this is so as a direct consequence of the early trademark as a reputation in the field of Motor Vehicles. 22. How trademark oppositions can be avoided?: How trademark or positions can be avoided in case of opposition against the European trademark application and owner of earlier rights will invoke them in order to stop the registration of this mark. So before applying for an your trademark is crucial. A preliminary trademark clearance search to be conducted. This search will show you whether or not there earlier marks that can prevent the registration of your trademark. It is good approach for such searches to be done through the brand building process. Because in that way you will be able to adjust your brand in a way to avoid any trademark conflicts. There are several ways for these searches to be implemented. The first one is to ask the IPO for a surgery part when you apply for a trademark, another way is to hire a trademark attorney to do this on your behalf. The third option is to do it on your own. In this case, you need to know how to search for registered trademarks. I will show you how to do a trademark search using the new IPO official online trademark database, which can be used for free. Go to the IPO website and select availability from the trademark drop-down menu. From there, click on Search plus, this will open the database. Click on advanced search to get the full list of search criteria. You can find a link to this database in the lecture notes. As you can see, you have a lot of options for search, but we will concentrate our attention on the most useful of them for our basic search, you can type your brand name in the trademark name input field. For example, let's search for the Buffalo brand-name for headphones. Before continuing with the search, you need to know which class of the misclassification covers headphones. Classification is important because when you apply for a trademark, you need to specify not only the goods and services themselves, but which nice classes they belong to. The misclassification has 34 classes for goods and 11 classes for services. The easiest way to classify your goods and services is to use an online tool called TM class, offered by the US IPO type team quasi in Google, or just use the link from the lecture notes when you are there, type headphones in the search term input here and click on the Search button. The first question that we will appear on the list is the cost wear headphones are classified. In our case, this is cost nine. Go back to the UI PR trademark database, type buffalo in the trademark name input field. After that, click on nice classification from a left sidebar and new input field who appear. Click on it and you will see a table of classes, select nine, and click on the Search button. The database will produce all identical or senior marks to Buffalo for nine, you can open a trademark file. When you click on some of the results. There, you can find when the trademark was filed, when it was registered, for what particular goods and services its owner, et cetera. So these trademark buffalo is registered among others for headphones, which means that if you apply for the same brand, it is possible and opposition to be fought against your application with good chances to stop it. Bear in mind that this search covers only Earlier you trademarks. However, the EU consist of 27 member states and every one of these countries its own national trademark wall and protection. This means that they are national trademarks which you need to take into account for your assessment apart from the earlier your marks, these national trademarks can stop your application for the EU trademark. To. The reason for this is the fact that you marks covered the territory of all EU member states. So from that perspective, so conflicts with earlier national marks can arise. The logic is similar to that one in the US, where there are state marks in every single state and federal marks for the entire country. How can you search for national trademarks in the EU member states? Well, there are several options. When you apply for European trademark, you can ask for a national search report that you'll be conducted by the UIP. Another way is to search using the national trademark databases of every of the 27 member states, which honestly is quite time-consuming task. The third option is to use another database called the NVO, offered by the UI PO again, that covers many countries in the world, including all EU member states and even all European trademarks. So instead of the previous database, you can use this one. Nevertheless, I recommend using both databases for better certainty in order to use TM view type the name in Google. Or use the link in the lecture notes. When you open the database, click on Show Advanced Options in the first input fields. Type the brand name. In our case, before, after that, click on the territory's input field and from the drop-down list, select European Union option. This means that your search will be limited only to trademarks from all EU member state, as well as European trademark marks and international trademarks for the EU. The next step is to type the nice Class 9 in the goods and services field. Mark this class and after that, go on the top of the page and click search. The database will show you all earlier. You marks as well as national marks for a bottle for cost nine. You can see in this column for which territory's the marks are registering. You need to consider all these marks because it's still active. They can be used against every new applications for Baco. How to assess whether the results from the search can be problematic for your trademark application. Now probably you ask to what extent you'll be able to assess whether the marks from the search can be, can be a problem. As I mentioned it earlier, there are two types of assessment for identical marks for identical goods and services and for civil marks for similar goods and services. In many cases, identity can be found easily if both sides are completely identical and the goods or services are completely identical to, this means that the early America will be able to stop the later one. For example, if you want to register it, does trademark buffalo with this font for cost nine headphones. And there is the same already registered trademark for headphones. In this case, we have four identity. However, every small difference will make the similar, not identical. In this case, we're talking about science with some differences, even very subtle, different letters, course, font, graphics, etc. So in this situation, the assessment can be much more tricky and depends on many circumstances, more or less. For such assessment, you will need in depth legal knowledge related to trademark wall, the IPO and the European Union Court case for practice, etc. It is recommendable a trademark attorney to be contacted for such assessment because professional advice is necessary. For instance, these trademark buffalo is similar to the trademark buffalo 1609. Both marks are for headphones, but there are differences in the font and the presence of a number in one of the marks. So you need to know the Patent Office and the cork practice to what extent your trademark can survive a possible conflict from that perspective. Having said that, these are the most important moments when it comes to the requirements for registration of European trademarks on absolute and relative grounds. 23. Section 4 - European trademarks registration process: In this section, we will go over the process of your trademark registration. You will learn how to apply for such trademarks and what stages the registration process goes through. Enjoy the lectures. 24. European trademarks registration: European trademark registration process. The registration process of European trademarks is quite straightforward. Her most of the part, it is really convenient because everything happens online, which is the faster and cheaper way compared to the paper option for filing trademark applications, the process is divided into five main parts. Filing an application with the UIP examination by the office, whether everything with the application is correct, including whether the application fees duly paid after that examination on absolutely grounds. The US IPO checks whether the trademark is eligible for registration for the relevant goods. And these are the requirements that we've already discussed. Next is publication of the application in the official offices butene and a three months period for possible oppositions by owners of earlier identical or similar trademarks or other rights. These are the relative grounds that we've discussed in the previous section. At the end, if everything with the application in circuit or registration certificate will be issued by the office. In the following videos, we will go over every one of these parts. 25. Filing a trademark application with the EUIPO: Filing a trademark application with the UI EPO. How to file an application for a European trademark. There are two main options for how you can file a trademark application. First, on your own, if you are a European Union citizen or you have a principal place of business or Aereo and defective industrial or commercial establishment in the EU, you are allowed to follow a European trademark application on your, on your own without the need to use a license, trademark representative, or attorney. Of course, this is possible only in case you know how to such an application. You have at least the bare minimum knowledge about trademark law and practice. Rather than that, you can waste your money and time finding an application with defects which can prevent the registration of the mark. Bear in mind that once you pay the application fee, the office will not return it if your application is refused, subsequently, create an account in the UI P0 to file a trademark application on your own, you need to create an account in the EU IPR true, which you can manage the registration process online. To do that, you need to go to the IPO website, the link to which is attached to the lecture notes. From there, click on the sign-up button. Matter that answered the question whether you have previous year trademarks. If not, select know. In the next window, check the box that you read, the provided information for the account types and select the legal entity or natural person button. The other option is for professional trademark representative Sony. Next is to type your username and email. You need an active email because all the correspondence with the UI EPO, we'll go through this e-mail in the details section, choose whether you act as a company legal entity, or as an individual, natural person. I will select a legal entity for this example, viewing all the required information if you are registering can account for a company and you require the legal forum LTD, PLS, et cetera, to appear in official publications. You must include this information in the company name field as always, in the legal foreign killed. At the bottom, you can opt for receiving alerts in your user area for the main milestones of your trademark protection. After you hearing all the information, click on, continue and finish the registration process. Once you have done that, you will receive an email containing cure activation code, followed the instructions to complete the activating process and walk in to your UI PO user area, you can find a link to a video in the lecture notes that shows the sign-up process. File a trademark application with the EU IPO. So in case that you are allowed to how a trademark application on your own and you have an account in the UI PO, you can proceed with the application itself. In order to find an application for a European trademark, you need to sign in your account and after-death to select online services from the left sidebar there you can find two main ways to apply for a trademark. The first one is to choose file a trademark using our five-step application. This is a short and faster way, but in order to take advantage of heat, you need to be sure that the list of goods and services that you specify in the application is in line with the goods and services approved by the office in debt by the officer will not need to check them. When you start to heal in the data, the system will tell you whether or not this requirement is fulfilled. Another thing, in order to take advantage of this fast preceding, to pay the fee for the application immediately. The second way to apply for a new trademark is to use file a trademark using our advanced forum. I will opt for it because it provides more details. The first few it is a reference, which is a number that every trademark owner has. In case you don't have previous marks, you can skip it. You can use templates from your previous trademark application. If you have such. The next few, it is to claim priority. This is an advanced option which gives you an opportunity to use an early date for your application, which is the same as the data for another application for the same trademark out in a member state of the Paris convention or a date of exhibition where products or services with your trademark were displayed in case you want to claim such priorities, probably it is better to get advice from a trademark attorney because the procedure can be complicated. The next few representative where you can view entails of your trademark attorney. If you have such one and you want to do that, the food you always applicants, where are all the details for the trademark owner? This is why you need to enter correct information when you create your EU IPR count. Because after that, the data will be filled in automatically for all your applications. The next few of these languages, the UI pure requires two languages for communication or over every application. The first one can be any of the languages of the EU member states. The second language can be one of the official VOIP or languages for communication, which are English, French, German, Italian, and Spanish. You need to specify both of the required languages. The radio button options below require you to select the kind of the mark you want. We've discussed them early on in the course. In most of the cases, the trademark will be individual, collective and Certification trademarks are registered, usually by different associations with members and their purpose is slightly different from the regular individual trademark. In the next field, you need to select what type your trademark is. We've discussed these two. I will opt for a wordmark that is to say assign consisting only of letters and no graphics or colors. Beware all you need to choose the language in which the word mark is typed. I will opt for English. I would type on a random based Nexium as a trademark. The area before requires you to specify the goods and services you want your trademark for. I want Nexium to be a trademark for electric bicycles, as in the previous lectures, to identify the nice class where these goods that are classified, we can use the tm cost to open it and type electric bicycles. Click on Search and the first-class relevant for these goods is cost. Well, that's what we need. There are two ways to include these costs of goods in your application. The first one is to apply only for electric bicycles. In this case, you can click on, I wanted to provide my list and after that from the window and it will pop up to select Quests 12 and 2 type electric bicycles. This will mean that your trademark will be valid only for these particular goods. However, if you plan to introduce new products with the same brand in the future, you need to specify additional goods in the same class or to include more classes depending on the case. The second way to define the classes is to click on the Search button and to find Quests 12 from the list. Click on the folder image and check the heading of this class. This means that your trademark will be valid not only for bicycles but for other vehicles to the strategy, however, should be used carefully because the recent IO card practice suggests careful specification of the goods and services. Not always the heading of a nice quests will be understood that covers all goods or services within it. If you have some doubts, you need to contact the trademark attorney. For this example, I will select the heading of the croissant, will confirm it. The next area, similar marks will give you a report for a singer or marks to your one. This is helpful, although I would suggest you to do a separate clearance trademark search in advance. I've already shown you how to do this in the previous lectures. In our case with Nexium, we don't have similar marks, but if we have end, they can stop our application. You need to go back and select a different brand. If you do this search earlier, you will save time. The next field is for national reports, which we've talked about earlier. They will show you not only the earlier similar trademarks, but all such marks in every member state. When we accomplish all data, we can move ahead clicking on the Next button, on the next page, you need to confirm the information. You enter it. Read carefully what you typed. When you reach the goods and services area, check that you agree with the automatic translation of the goods. If you don't agree, you need to correct them manually. In the left sidebar you can see how much the application will cost you, in our case, €850 for one nice class. If we have a second cause, this will add 50 Euros more for every class above the second, you will need to pay an additional a €150. At the end, you need to specify your individual name or company name depending on what you select initially as an applicant, how we will not do that, because this is just an example. The only window that will appear after this is for choosing the payment method, a credit or debit card or bank transfer, or an option to pay using money added to your IU account in advance. Finally, you can download your application. That's everything. As I said, the application process is quite straight forward and relatively simple. Again, if you are not sure or don't have enough knowledge, you can ask for help from a trademark attorney. 26. Trademark representative, examination, publication, opposition, registration : Filing a trademark application through a trademark representative. If you are outside the European Union, in most of the cases, you need to use a trademark representative or attorney to file and you mark, as I've already mentioned it, but you can do this even if you live in the EU in case you don't know how to file such an application or just don't want to do it yourself. You can hire someone to help you. The main advantage if you opt for this option is that you don't need to do anything. The trademark representative will do it on your behalf. This is almost mandatory if your trademark application has a position, refusals, et cetera, because all that requires in-depth legal knowledge. However, there is one serious disadvantage. You need to pay an attorney fee on top of the patent offices fees for the trademark application. At the end of the day, everything depends on your available budget and willingness to tackle this registration process. Examination of the trademark application, after you file a trademark application on your own or true and attorney, the UI EPO, we will review the application, whether IT compliance with all requirements. The office will check the information for the applicant, whether the trademark is represented correctly, whether the goods and services are classified correctly, the fees are paid duly, etc. After that, the UI P0 will check whether your trademark can be refused based on the absolute grounds. That's why you need to bear in mind these grounds before applying for a trademark, otherwise you risk such a refusal. Next, your application will be translated in all official languages of the European Union. If the UI PO detects an error, it will send you an official communication. You will have two months to remedy any deficiency entry point. You may ask for an initial two-month extension of time to prepare your response if your answer doesn't entirely address the office concerns or if you fail to respond, the UI P0 will issue a final decision, either partly or entirely are using your application, publication of the application. If your application complies with all requirements, it will be published in the official UIP guillotine. Possible oppositions against the application radioulnar of earlier rights. We will have three months after the publication of your trademark application to decide where to find a position against it. These are the relative grounds for trademark refusal, which we've discussed in the previous lectures. In order to avoid conflicts with earlier trademarks, it is absolutely necessary a clearance trademark search to be done in advance before filing an application. This can save you a lot of time, money and problems. Even if you haven't used a trademark attorney until the stage in case of an opposition, it is recommended to contact one because the the opposition procedure requires a legal knowledge to be handled properly. Once a notice of a position is received, the UI plug gives her both sides determined periods to try to reach a friendly settlement. This is the so-called cooling off period. If there is no mutual agreement, the UI EPO, we'll continue with the proceedings requiring statements and evidence depending on the particular circumstances. At the end, the UI IPO will issue a decision. The losing party will have to pay the cost for the preceding. This decision can be appeared before the border, hope you of the UI IPO, and after that, before the European Court registration, if your trademark is not refused based on absolutely grounds and nobody fouls and opposition on relative grounds. Your trademark will be successfully registered and this factor will be published in the UI, pure beauty. In that way, other trademark owners and the public in general will be informed that you are the owner of the relevant mark. After that, a certificate for registration will be issued. You can download the certificate two days after publication. No paper copy of the certificate will be issued. However, 35 or uncertified copies of the registration certificate may be requested. 27. Section 5 - Maintenance of European trademarks protection: Welcome back. In this section, we will discuss what is necessary in order for trademark protection to be maintained in the time, enjoy the lectures. 28. How to maintain trademark protection?: How to maintain trademark protection. Many people believe that once registered a trademark is protected indefinitely and without any further obligations. That's not true. After receiving a successful registration, the trademark owner has to take care of this registration in the future in order for the rotation to be viable, there are three main activities that have to be implemented. Creating a trademark archive with the necessary information. This is one of the first things that has to be done once the owner receives a registration of a trademark archive. In this case means a place where you can find the relevant documents and information for your trademarks, which you may need to know or use every now and then. The archive can comes in two forms. Physical archive, these are documents on paper issued by the Patent Office in regard with or the trademark registration, for example, the trademark certificate, although some obviously is nowadays starts to issue online digital certificates only. Nevertheless, if there is important documentation related to the trademark, it has to be stored properly in order to be found when necessary. As a digital archive, it covers all electronic documents related to the relevant trademark protection. For instance, applications, payments, licensing agreements, or communication with the patent obvious entered trademark attorney, different analysis and strategies, etc. One good way to be aware about the current trademark status is to create a database where to store information about all your trademarks. I will show you one example for such a database created in Google Sheet. You can find these templates attached to the lecture notes. In the first column, we have the trademark itself, whether it is a wordmark or combination between words and graphics or colors. Next, we have status, which means registered trademark, application or refuse trademark or cancel trade markets had. The following column is for the territory where the mark is registered, for example, for the US, Germany, etc. Next we have the application and registration numbers depending on the trademark status. Next is the firing and registration dates. They are very important. From my hand, you can oppose every identical or similar mark with a later filing date. On the other hand, you need to know the registration date because according to the wall, several years after this date, five years for your marks. If you don't start using your mark, everyone with an interest can try to revoke it for non-use. The next date is for exploration of the trademark rotation. You need to monitor this data in order to renew the trademark protection on time, otherwise you will lose it. Next is the classes of goods or services mentioned it in the trademark application. In the following columns, you can include information for the paid fees, trademark refusals into positions if any, licenses given to other companies for the mark and finally, notes, bear in mind that you can modify this table and depending on your particular needs. But all in all, this is the way a database for trademark looks like. And of course nowadays, there are many software decisions that can help in that regard. 29. Monitoring for new identical or similar trademarks: Monitoring for new identical or similar trademarks. Once you have registered European trademark and irrelevant archived information for it, you need to implement monitoring activities related to this mark. Trademark monitoring in brief needs to look for a new trademark applications that are identical or similar to your registered science, as well as for trademark infringements, monitoring for identical or similar later trademark applications. These can be done in two ways. Checking the UI EPO, weekly bulletins for a new trademark applications and comparing those applications with your trademark for the relevant goods and services. This is the cheapest way, however, it is time-consuming and cumbersome. For example, to find the UIP abilities, you need to go to the UI IPO website to click on Search. And after that on us search posts, click on Advanced Search and then select the daily publication tab. There you can find and download all new UIP abilities that are issued every week. Another way for monitoring is to use specialized software. We will monitor the UIP, your trademark database for a new, identical or similar applications. It is a faster way to detect new trademarks. However, it will cost you some money. Either way, this monitoring is important because under the trademark, owners are responsible to stop new trademark applications by firing positions against them in a three months period after their publication in the official purity. If you miss the deadline, the relevant similar mark will be registered. And after that, you will need to appreciate it's a constellation which can take more time and money. Market monitoring for trademark infringement. This means to collect information from the market for every use your trademark by someone else without an authorization. According to the wall, one trademark can be used only with the consent of its owner. That's why the entire logic behind trademark registration is to prevent such unauthorized use. You can implement this task in different ways. For example, you can ask your trade or marketing department to watch out for such infringements because more or less they keep an eye on doing current market, enter competitors. There are some software decisions and companies that can do this job on your behalf to once you find a trademark infringement that you need to collect evidence and to build a trademark enforcement strategy. This requires advice bird, trademark attorney, for sure. 30. Renewal of trademark registration: Renew trademark protection. As I mentioned it earlier in the course, every European trademark is valid for 10 years. This then can be renewed indefinitely for 10 years at a time. There's a new procedure is as follow. First of all, six months before expiry of the registration UI, we will inform the owner or their IPO representative in writing that the registration is due for renewal, it is advisable, however, you, as an owner, to have a database with a trademark record that to alarm you about the expiration date. Next, if you want to renew the trademark protection on your own, you need to go to the UI IPO website to signing in your account and from the available services to select the renewal option. After that, you need to hewing the requested information. When you submit the form, you need to choose the payment method because for renewed there is a patent. Obviously, the basic fee for renewal of one trademark for one nice class of goods or services is €850. And the second quasi 50 years or more Area additional cost above the second will cost you a current enter, €50. When the trademark protection is renewed, you receive a notification by the UI EPO. Our request for renewal can be made enter the fee for a new op-ed in the six month period, peer to the expiry date of the registration. The latest possible date for requesting the renewal and paying the fee is the expiry date of the trademark. An additional six month grace period for a new start on the day following the date of experiment. During this period, however, an additional here of 25 percent will be charged. 31. Invalidity and revocation of registered EU trademarks: Validity and revocation of registered European trademarks. Even though you have a registered trademark, this doesn't mean that your rights are completely solid. The reason for this is that the registration process for such marks is based on possible opposition by owners of earlier similar rights. If they want to file such and if they know about your trademark in the first place, the UI pill will not check whether you are trademark is identical or a senior too early register it's science. All this means that even in case you receive a successful registration, you can face possible future conflict. That's why it is so important for you to do your homework in advance before filing a trademark application. That is to say, you need to be sure that your trademark will not be refused based on absolutely grounds, descriptive names, etc. And we will not come into conflicts with the earlier rights. In general, there are two possible negative outcomes that can happen to your registered mark. Validation. This means that the owners of earlier trademarks that misfiring compositions on time can try to cancel your trademark later. In this case, the UI P0 will comparable size and we'll take a decision. The only option to avoid such invalidation is if you prove that the owner of the earlier Mark has known about your trademark for a period of five, consequently, years after its registration, and they tolerate your mark without doing anything against it. After these five-years of tolerance, they cannot ask for irradiation, revocation. This is another option for cancellation of an EU trademark. According to the wall, every trademark owner, he has to use its trademark. And if there is no such use, four or five consequence of ears, any third party can claim a revocation of trademark based on a lack of genuine market use. The logic behind this requirement is that the you are not allowed to monopolize a one sign forever without using it. Otherwise, there will be on wall hormone and validation of hundreds of brand names. If such a revocation claim hits your trademark, you need to prove a january use. This requires you to submit evidence such as invoices for sales, advertisements, information for market shares, affidavits from contractors center business partners that confirm your trademark use. Customer researches, different awards, media publications, etc. If you successfully probing trademark use in the new market, your trademark registration will survive, but otherwise it will be revoked enter you lose rights over it. 32. Section 6 - Enforcement of European trademarks: Enforcements of European trademarks. Welcome back. In this section, we will talk about how rights over European trademarks can be enforced in case of infringements, you will learn the basic rules and how to defend your trademark rights in the EU. Enjoy the lectures. 33. What is trademark infringement?: What is trademark infringement? To tell you the truth. So enforcements of trademark rights in case of an infringement can be a complex and time-consuming task. That's why it is always recommended for such cases to be discussed with a trademark attorney who can analyze them and can offer an appropriate strategy for enforcement. Nevertheless, it is useful for every owner of European trademarks to know at least the bare minimum about the enforcement options. So let's go over some of the main points are related to this enforcements in the EU. What is a trademark infringement in the first place? In brief, trademark infringement means an illegal act of trademark use without a prior consent by the trademark owner. Every trademark owner has the right to use its trademark in the EU and to prohibit the use of IT by someone else without an authorization. If this happens, the trademark owner can rely on trademark rotation given by the wall to stop the unauthorized use. The only exception is in the case of a trademark exertion. This means that the trademark owner cannot prohibit the use of its trademark in relation to goods which have been put on the market in the US under desk trademarked by the owner or with his consent. For example, if you sell legally products with your trademark to customers in the EU, in most of the cases, you cannot prohibit the sale of these products after that, on the territory of the EU, etc. 34. Call a trademark attorney and enforce your rights: Trademark attorney and collect evidence for the infringement. Before doing anything else, you need to discuss the trademark infringement with a trademark attorney in order to find out what the options are and is there a good chance for success in case of a lawsuit? Next, you need to collect evidence for the infringement. This evidence can vary depending on what goods or services the infringing trademark is used for. For example, you can buy the infringing product with an invoice. You can screenshot to the website where the infringing products or services offered. You can ask third parties to confirm that the relevant products or services are offered under your trademark, et cetera. How trademark rights can be enforced in the EU. After the case is analyzed by a trademark attorney and evidence is collected, the enforcement process can start in corresponds to rights means that the trademark owner takes legal actions against the infringer in order to stop the unauthorized use of its trademark. The enforcement process itself can be divided into several steps. Sees dental disease letter, it serves as a warning letter that can be sent to the infringers, asking them to put an end to the region on the action, one must be very mindful of the language used which should be adapted to the particular circumstances of the case. Mediation or arbitration, sometimes before initiating lawsuits and mediation between the parties can be a possible and quicker solution. This is a procedure outside the court where both parties in the dispute tried to reach an amicable solution. Sometimes this can be an easier outcome compared to long and costly lawsuits. If the cease and desist letter entered, the mediation fails to produce the desired result. There are several legal actions that can fall. Cbo enforcement 0 actions regarding infringement of European Union trademarks under the Civil War are heard by the EU trademark courts of the EU member states. This means that you can file a claim before such a cork in the EU member states where the infringement happened, you can ask the court for provisional measures to be taken at the earliest stage intended to avoid potential further infringements and to preserve relevant evidence. Damages recovery measures to be applied once the infringement has taken place, intended to compensate for the damages suffered by the right holder, including or ISPs, posts, trailing enforcement proceedings to be initiated once litigation on IP infringement and damages recovery has come to an end. This means that if a card has determined that the infringement, the right holder essentially request the court to order the infringer to pay the damages as determinant in the court decision and to publicly announced it. Criminal enforcement, criminal sanctions related to IP infringement. So many concerns, the counterfeiting and piracy because of the public interests, criminal cases are prosecuted by a public prosecutor and investigated by the police. Search goal sheets can end with prison sentences. Custom actions. You can ask customs in every member state to detain goods at the border if such goods increase your trademark rights while the goats remained under custom control, the right holder is given the opportunity to initiate court proceedings in order to determine the infringement. For example, if you discover that one company imports it goes label it with your registered trademark in the EU, you can try to stop these importation, true custom measures, of course, you need to be sure that this is an infringement because otherwise, if the accusation is not well-founded, the court can order you to pay compensation for the detained goods on wine. Enforcement if the infringement of your European trademark happens on the Internet, you can take some measures to stop it. The most well-known, affordable and simplest online enforcement actions are notice and takedown systems. This means that you can file a complaint it directly on the website where the infringement has been detected. So the concern, the product can be literary taken down from the website. For example, if you detect trademark infringement on Amazon, you can file a complaint in order for Amazon to take down the infringing product in case the entire website offering the infringing goods is illegal, you can ask the court to order the Internet Service Provider in your country to take down these website. 35. Section 7 - Conclusion: At the end of this course, we can summarize some of the most essential moments when it comes to protection of European trademarks. We've learned what European trademark is and the fact that it covers the territory's of all EU member states. We have learned what types and kinds of your trademark exist. We've discussed how to classify the goods and services which needs to be included in every application for European trademarks, we've learned that the thermal protection of European trademarks is ten years and that it can be renewed for next period of 10 years indefinitely. The cost for registration or European trademark starts at eight hundred and ten hundred fifty euro. What's more? We've learned what the requirements for registration of trademarks on absolutely and relative grounds are. We've gone over the entire registration process of European trademarks. You'll learn how to file an application for a European trademarks on your own. We've discussed how the protection of a registry trademarks should be made in it, and how trademark owners can enforce their rights in the EU in case of infringement. In conclusion, I want to say that it was a real pleasure for me to be your teacher. And at the same time, I hope that the knowledge from the class will be available to you in your future activities. The skill or how to protect European trademarks is really helpful and beneficial, taking into account the economic importance of the European Union as a whole. At the end, I would like to give you a complimentary PDF file where you can find the BRI and guidance related to registration of European trademarks. If you enjoyed the class, please post a review. It will be a valuable support for me and the motivation for neoclassic, good luck and all the best.