Congrats! You have registered your trademark in the EU! Let’s celebrate as you have received your e-certificate. Yes, e-certificate. Those who has not yet gone through the protection before European Union Intellectual Property Office (EUIPO) be aware that EUIPO is a paperless office and issues only e-certificates sent via email in a pdf form. No worries – it is legitimate and works as any other certificate but if a paper version is needed there is a way to get a legalized version through EU Commission by paying an additional administrative fee.
O.K., now you know that your freshly received e-certificate is a valid proof of a registered trademark in the EU. And what’s now? If you think that your next important step is to just schedule a deadline to renew it in 10 years this might not be enough.
Why? Ask yourself why did you bother in the first place to invest and protect your rights? You wanted to make sure that only you and no one else can use your brand name, business name, trade name – your baby on which you have spent a lot of time and money. You wanted to block others from being able to register later same or similar name for same or similar business activity to yours, right?
And here comes a couple of important comments to bear in mind about the EU trademark system protection. You have probably observed that it was relatively quicker process than in other countries. Moreover, if you received any objections issued by EUIPO it did not include objections connected with any earlier marks that your mark could be found confusingly similar with even when you know or could assume that there are plenty marks including term ‘x’ on the register.
Did you ask yourself why at the time of filing and examination procedure? The answer is – the EU trademark law differs from those of some other countries such as in the US, Australia or China. In the EU the relative grounds (earlier existing marks) are not the subject of an initial refusal of new applications during the examination procedure. Thus, the procedure is smoother and you do not have to worry that EUIPO will cite a mark belonging to a company which does not exist any longer but their mark is still registered and could bar your application from being registered.
And only when the owner of an earlier mark files a formal opposition within a 3 month publication period you will have to defend your application or find alternative solutions. Thus, if there was no opposition in your case it does not mean there were no identical or similar earlier marks to yours. It means no one was interested in filing an opposition against you – may be because they missed the deadline, maybe because they do not have funds, maybe they were not any longer in the business, maybe… or maybe they were not aware about your application at all.
Nevertheless, you have registered your mark and this matters for you. However, have you ever though what does it mean for you after registration in the future?
Simply, it means that in case someone files an identical mark for identical goods even a day after you EUIPO or other EU member’s trademark offices will do not bar them from registering their mark. It is your call to take necessary steps and use possible legal ways to stop them from registering (and using) the mark which can be confusingly similar to yours. Remember, if not today tomorrow your clients may confuse your registered mark with another identical or similar mark registered in the EU or also before single EU members’ trademark offices and you may lose them.
It is your role to monitor official registered of EUIPO and EU member’s trademark offices and react whenever you see a new application for a mark which can be a threat to your brand, to your goodwill and which moving forward can damage your reputation or take unfair advantage of what you have created and spent your time and resources on.
Consequently, keep this in mind that registration of your trademark might not be sufficient. A really good mark is the one you take care of and enforce your rights based on it monitoring the relevant markets and registers. If you do not have the time or rather prefer to spend it on developing your business you can ask your lawyer to take care of the same. We do use special tools to monitor relevant databases on a regular basis and whenever we see anything that could threaten your brand we will let you know discussing available options each time.
KATARZYNA ELIZA BINDER-SONY, is a Polish intellectual property and commercial solicitor based in London, specializing in European Union trademark and design protection. Besides developing and protecting her clients’ brands and ideas, Eliza also provides consultancy services in both commercial and corporate law. Eliza received her LL.B from the University of Law, London (Hons) and has a Masters in Law from the University of Cardinal Stefan Wyszynski, Warsaw, Poland (Hons). She loves coffee, particularly Spanish café bombón (and generally everything Spanish – food, people, sound of language, country, beaches, islands, and literature).