Brand Protection

Registering Trademarks in the EU & Beyond

Establishing a strong business identity is essential to succeed in today’s competitive landscape. It is not only about making a mark but it’s also about gaining recognition and visibility within your sector and industry. 

It is for this reason that businesses, to protect their identity, opt towards the registration of intellectual property. This not only ensures legal protection but also secures your brand’s reputation and market position. 
Why should I register a Trademark? 
Registering a trademark grants exclusive rights for its use, preventing confusion and protecting the company’s reputation. This registration also provides legal protection, allowing the owner to take legal action against infringers and securing exclusive rights in commerce, giving the brand a competitive edge. Moreover, a registered trademark enhances the company’s value, making it more appealing to investors or buyers.

Can my Trademark be protected at different levels? 
Your trademark can be protected at different levels, each offering different scopes of coverage - at national level, at a regional level (EU) or an international level. Each level of protection offers distinct advantages and considerations based on business needs, market presence and expansion goals. 

The European Union Trademark
Within the European Union (EU), trademark registration falls under the jurisdiction of the European Union Intellectual Property Office (EUIPO). A trademark must possess distinctiveness, meaning it should not merely describe the associated goods or services, and must not infringe upon existing trademarks. The procedure for obtaining a European Union Trademark (EUTM) entails conducting a thorough trademark search to ascertain its availability for registration and ensure no similar trademarks are already registered. This process also includes drafting and submitting the application to the EUIPO, addressing any objections or oppositions, and ultimately obtaining registration.

Securing a trademark registration through the EUIPO and obtaining an EUTM has numerous advantages. The EUTM presents a cost-effective solution spanning across all EU Members States, with a single registration significantly streamlining the process, reducing administrative burdens, and cutting costs, compared to individual registrations in each Member State. This unified approach guarantees consistent rights and remedies, promoting legal certainty and uniform protection across the EU. Possessing a registered EUTM enables efficient enforcement of trademark rights across borders and facilitates prompt legal action against potential infringers. The expansive territorial coverage of the EUTM serves as a potent deterrent against infringement, preserving the integrity of the brand. Moreover, the EUTM acts an effective branding strategy, establishing a robust foundation for market expansion beyond EU borders and bolstering international recognition to facilitate global trade.

Worldwide Trademark Protection
While securing trademark protection within the EU is crucial for brands operating in the region, many businesses aspire to expand their presence beyond European borders. Fortunately, mechanisms exist to facilitate international trademark registration, such as registering a trademark with the World Intellectual Property Office (WIPO) under the Madrid System. This enables trademark owners to file a single application, in one language and one currency, for protection in multiple countries, streamlining the process and reducing administrative burdens. Upon approval, a trademark registered under the Madrid System extends to the member countries selected by the applicant, simplifying the procedure. This offers numerous benefits including cost-effectiveness, efficiency and expediency in the registration process. By centralizing management under WIPO, trademark owners can easily renew and maintain their registration, as well as it ensures consistent protection across multiple jurisdictions, facilitating global brand expansion while safeguarding intellectual property rights. This avenue also enables businesses to expand their brand globally while ensuring consistent protection across various jurisdictions.

The article was written by Dr Daphne Vassallo, Junior Lawyer

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