Boult Wade Tennant
/european-union-trade-mark-eutm-application

European Union trade mark (EUTM) application

The documents/information/instructions required by us to prepare a European Union trade mark application are as follows:

  • Full details of the applicant’s name, address and nationality.
  • For incorporated bodies, the country or state of incorporation.
  • If the applicant is a business/company, its legal form is required.
  • Details of the trade mark including representations (preferably in a jpeg) if it is a device mark.
  • The specification of goods and/or services to be covered. UK/EUTM applications may be multi-class. We can draft a specification if we are provided with an indication of the goods and/or services of interest.
  • Details of any priority claim. In some cases a copy of the priority application will be required to support such a claim. For a European Union trade mark application which claims priority for an earlier application previously filed in a Paris Convention country, the application must be filed within six months of the priority application.
  • Details of any seniority to be claimed from existing registrations in member states of the European Union. The seniority claim can be made on filing, within two months of filing or alternatively post registration. In some cases a copy of the existing registrations may be required to support such a claim.

 

The prosecution stages of a European Union trade mark (EUTM) application

*Approximate time scale (from priority date)

Notes

  1. Applications must be filed directly at the EUIPO, the European Union Trade Mark Office, in Alicante, in one of the official EUIPO languages. At Boult, we usually select English as the main language. The goods or services in relation to which the mark is used or intended to be used must be specified in the application. Seniority may be claimed from earlier national rights on filing or post registration.
  2. If priority is claimed from an earlier UK or overseas application, a certified copy of the earlier application may be required if the EUIPO cannot find details of the earlier application online. Particular attention is given to classification and specif
  3. The searches carried out by the EUIPO (EUIPO search) and by some of the national offices of the members states (national search) must be requested in the application form. An additional fee is payable to obtain the national search. Unforutantely, many details are not given on the search report i.e. current status, goods/services, proprietor, etc. No response is required to be filed, but particularly pertinent marks should be followed up independently.
  4. The application is examined on absolute grounds only, i.e. whether the mark is registrable. If the objections are not overcome in the first response, one or more further opportunities to respond may be given.
  5. The application is published by the EUIPO so that third parties may oppose on relative grounds (i.e. on the basis of ownership of prior EUTM and national rights). If an earlier registration or application has been cited in the EUIPO search report, the EUIPO will send the proprietor of that earlier right notification of this publication in case they wish to oppose.
  6. Renewal fees may be paid every 10 years to maintain the registration ad infinitum.
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