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Trademark Registration Procedure In The European Union And Great Britain

Trademark registration procedure in the European Union and Great Britain

Michał Madaj

Michał Madaj

10 November 20233 min read

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Why is it worth registering your trademark outside Poland?

You can read about the trademark registration procedure in Poland in the previous article on this issue. However, this process carried out in Poland may not be sufficient. Anyone who wants their trademark to be protected outside Poland should submit it for registration before patent offices whose jurisdiction extends beyond the borders of our country. This applies in particular to the European Union Intellectual Property Office (EUIPO) and the United Kingdom Intellectual Property Office (UKIPO). These equivalents of the Polish Patent Office are crucial in the context of securing your trademark in Europe.

How does the trademark registration process work?

  1. In the European Union

The first step that a person applying for registration of a trademark should perform is to check whether a similar mark has already been registered in the EU jurisdiction for completely or partially identical goods/services defined in the Nice Classification. TMView may be a helpful website in this matter.

If this stage does not cause any obstacles, you can proceed to activities strictly related to the EU and British patent offices.

The first step will be to apply for registration of the mark to EUIPO. The Office then examines the application in terms of completeness of information and formal correctness. Typically, this process takes about 2-3 months, and if any obstacles are found during it, the reporting party has two months from the second of receiving information about the existing obstacles to respond to the matter. If there is no such obstacle, the EUIPO checks the compliance of the trademark applied for with the absolute grounds for failure to grant protection prepares a report on similar trademarks, and sends it to the applicant and the owners of the found trademarks. All this culminates in the publication of the mark and all information related to it in the EUIPO Bulletin.

After publication, other entities have three months to object to the registration. If there is no such objection, the official process of registering the mark begins; in the event of an objection, EUIPO conducts opposition proceedings (which the parties may also resolve by settlement, in which case the proceedings are terminated).

If there are no obstacles, the mark is registered and published in the EU Trademark Register. The mark is valid and protected for ten years, with the possibility of renewal for the same period each time it comes to an end.

2. In the UK

The beginning of the registration process before the UKIPO is confusingly similar to its EU counterpart. As in the case of registering a trademark in the European Union, in the case of the UK, the applicant should first check whether a similar mark has already been registered and does not cover wholly or partially the same classes defining goods/services. This is important because if the UKIPO finds a similarity between the trademark applied for and another existing one, the Office may inform the owners of marks similar to the applicant's about the registration of the new mark.

Then - similarly to the procedure before EUIPO - the research period lasts several weeks, during which UKIPO examines the application, creates a report based on it, and then sends it to the applicant. If the Office finds any objections to the registration of the mark, the applicant has two months to respond to them. If no such objections are found, the mark is registered, and third parties also have two months to submit any objections.

If there is no objection, the mark is registered and the applicant receives a certificate confirming the registration. The mark is protected for ten years, but this period can be extended - as in the case of a trademark registered in the EU - countless times.

Who can register a trademark?

Anyone can register a trademark if they feel they need it. You can do it yourself, but a more recommended method is to register the mark through qualified patent attorneys. You can find such help at https://www.trademarkia.pl/, where our team will make sure that the registration of each mark entrusted to us is as effective as possible.


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FAQs

After Brexit, will all trademarks filed in the EU automatically cease to be protected in the UK?

NO. Trademarks that were registered in the European Union by December 31, 2020, have identical equivalents in the UKIPO, which is why they are also protected in Great Britain.

Are there additional initiatives to facilitate trademark registration?

Yes. For example, the SME Fund was created by EUIPO, which facilitates the trademark registration process for small and medium-sized enterprises using various types of subsidies.

What is the Nice Classification?

The Nice Classification has 45 classes, of which the first 34 classes refer to goods, and the remaining 11 are service cash registers. It specifies the types of services/goods covered by the trademark.

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