4 EU trademark practice tips
① Take advantage of the language regime
Despite EU trademark application has to be filed in two languages, it is possible to have all proceedings in one major language of your choise. The trick is to choose the first language for the application from any of the non-official EUIPO languages. The official languages are English, Spanish, French, Italian and German. The second language must then be on of the five (e.g. English). In this way any possible opposition or cancellation proceedings will be in English. It is also possible to ask the application to be examined in the second language (in this case, English). For example, filing the application in Finnish and English will ensure that the proceedings will be in English. If the first language is e.g. English, the second must still be on of the official remaining 4 languages (e.g. German). In that case the proceedings (oppositions, invalidations) may be in either language, determined by the other party. To get the language benefit, avoid English, German, French, Italian and Spanish as the first language of the application and choose from those the best possible languange as the second language of the application. Ipriq Intellectual Property Law files the applications in Finnish (first language) and English (second language) in order to secure English as the language of the proceedings for our clients.
② Use EUIPO's online tool
EUIPO provides top world class online tools for a variety of needs, such as classification, trademark searches, analysing similarity of goods and services, etc. These are useful even if you are not applying for an EU trademark. You can for example find out if two products will be considered similar (and to what degree), get translations of goods and services for many language, even non-EU languages like Chinese, Russian and Korean. See EUIPO's online tools and there descriptions and links here.
③ Know the examination process
If a mark is devoid of distinctive character or descriptive in any of the 24 official EU languages, it cannot be registered. Due to the concept of "unitarity", a registration obstacle, even if it relates to only one country or one language, is sufficient to prevent EU trademark completely. The distinctiveness (descriptiveness) is assessed in every EU language. Another point to notice is that EUIPO does not autumatically considered prior similar trademarks to prevent the EU trademark registration. It is for the owners of prior rights to oppose conflicting applications if they consider it necessary. As with distinctivenvess, a prior registered similar trademark even in one country is sufficient to prevent the registration of the EU trademark as a whole. If there is a registration obstacle in only some of the EU countries, it is possible to "convert" the EU trademark into national applications without losing the filing date.
④ Beware of illogical deadlines with international trademarks
If you have designated EU in your international trademark registration, the opposition period against the mark starts automatically 1 month after the "republication" regardless of the outcome of the examination. The opposition period is 3 months, and it runs irrespective of the examination of the application. Therefore, you cannot wait for the outcome of the application proceedings if you want to oppose an international registration designating EU. You will have to oppose during those 1-4 months after "republication", and then just wait for the outcome of the examination. If the application is refused, there will not be any opposition proceedings. If the application is accepted, the oppositions that were filed between 1-4 months start proceeding.