Inasmuch as client relocation, consultancy and the provision of company services form the bedrock of DWP Dr. Werner & Partner's core functions, a less talked about service is our bespoke assistance with Trademark applications.
Throughout this article, we will be exploring the rigours and processes involved in obtaining an EUTM (EU Trademark) with the EUIPO (European Union Intellectual Property Office) and how our team of experts can prove to be indispensable in ensuring a smooth & successful application.
What do we mean by 'Trademark'?
The EUIPO defines a Trademark as a 'symbol which your customers use to pick you out.' Contextually, a trademark should serve as a defining 'mark' in distinguishing your products or services from that of rivals or competitors. However, a Trademark may also reflect certain traits such as excellence, quality, or ambition. For example, what makes the Ferrari mark more distinctive than others (even for non-sports fans) is the fact that the logo/symbol represents a winning mentality or brand which people want to be associated with.
Trademarks therefore help provide your company with a unique identification - distinct from others. In this connection, clients who are relocating to Malta might also consider it imperative to obtain certification (and endorsement) for an EU Agency to ensure their intellectual property rights are not only protected but recognised on a supranational scale.
Types of Trademarks.
In terms of the EU Trademark Implementing Regulations, the following types of 'marks' can be applied for through the agency's e-portal. These being primarily:
- Word Mark - one of the most popular consisting solely of letters, numbers or other standard typographic characters.
- Figurative Mark - normally associated with stylisation, layouts or graphic features. There is also an ancillary application titled: 'Figurative Mark containing word elements' - which is self-explanatory.
- Shape Mark - which refers to the registration of three-dimensional shapes. There is also an ancillary application titled: 'Shape Mark containing word elements'.
- Position Mark - this consists of a specific way in which the mark is placed or affixed to the product being marketing.
- Pattern Mark - A pattern mark consists exclusively of a set of elements which are repeated.
- Colour (Single)Mark - an application consisting exclusively of a single colour.
- There is also the possibility of filing a Colour (Combination) Mark - consisting of a combination of colours without contours.
- Sound Mark - consisting solely of a sound or combination of sounds.
- Motion Mark - an application consisting of a movement or a change in the position of the elements of a mark (i.e., different motions registered in one application).
- Multimedia Mark - this consists, or extends to, the combination of images and sound.
- Hologram - A new category of trademark - consisting of elements with holographic characteristics.
The role of the EUIPO.
The EUIPO is the decentralised agency of the European Union tasked with overseeing, creating and offering Intellectual Property (Brand) protection to businesses across the EU and beyond. Since 1994, the office has been based in Alicante, Spain wherein the management of trademarks and registration of community designs is handled.
As per EUIPO statistics, the agency registers roughly 135,000 EU Trademarks and close to 100,000 designs on an annual basis. It is worth noting that the Agency also houses the 'European Observatory on Infringements of Intellectual Property Rights' - whose role is mostly centred towards combating piracy and counterfeiting.
Benefits of Registering your 'mark'.
One of the benefits of obtaining registration is to ensure protection against infringement suits. Contextually, the burden of proof is always much higher should someone copy or infringe upon your licensed creation (which in itself would be an already registered trademark). Moreover, by ensuring that your trademark is registered - you are also afforded comfort knowing that your 'mark' is not similar to any other registered trademarks (particularly since the EUIPO affords a period of opposition for any claimant to file an appeal against a prospective registration).
The registration of a 'mark' also ensures that your business enjoys exclusive rights to operate and market its logo/brand and should a rival/competitor steal your mark or creation - you will be entitled to seek legal redress against anyone that infringes on your intellectual property rights. Considering that certification and endorsement for protection of your mark is valid throughout all 27 EU Member states - registration therefore strengthens the legal protection of your own mark.
Goods & Services.
As part of the application process (contents of which will be described in the next paragraph), DWP can assist you in deciding on the appropriate 'Nice Classification'. Simply put, for every mark applied for with the EUIPO, applicants will be requested to select the appropriate 'goods and services' per mark as accurately and precisely as possible. Said 'goods and services' will be covered by that respective mark. This list of 'goods and services' is known as the Harmonised Database - and allows the EUIPO to process the application more smoothly & efficiently.
Whilst clients might be tempted to apply for as many goods and/or services as possible, it is important to note that selecting too many classifications might actually lead to a higher risk of classification deficiencies, delays in the registration of your EUTM and the possibility of oppositions being filed by other trademarks accordingly.
The process can be divided into four main areas.
1) Examination 2) Opposition 3) Registration and 4) Appeal.
Upon submitting an EUTM (Trademark Application), the EUIPO will carefully examine the prospective mark to determine any errors or raise any objections. Official communications are sent through the 'User Area' portal. In some instances, applicants or representatives may be contacted via phone to clarify and solve any anomalies. Throughout the examination process, the officer will also check the Nice Classification, any formalities, translations and eventually (and hopefully) publish the application.
At this point, the Opposition period will kick in whereby third parties who believe the trademark should not be processed are afforded three (3) months to object. Motives for opposition typically involve either an (i) Earlier Right (wherein a third-party has an earlier right which might lead to a conflict) or (ii) Absolute Ground (i.e. requirements that the trademark needs to satisfy before acceptance like being 'distinctive' and 'clearly represented').
In the eventuality that no one files an opposition (or third-party observations), the trademark is registered and published. This is primarily done to ensure the general public is aware that the particular mark belongs to you and your respective business/company. A Certificate of Registration is then issued, and the user is invited to download a copy.
An EU trademark (EUTM) is valid for ten (10) years. It can be renewed indefinitely, ten (10) years at a time for each renewal.
Role of 'DWP' as a Representative.
DWP Dr. Werner & Partner is registered with the EUIPO as an Authorized Representative (No. 91203) accordingly. Following a recent change in law, representatives (especially from a Maltese perspective) are requested to have, at least, two legal practitioners registered with a professional body (Chamber of Advocates) - criteria which 'DWP' fulfilled back in March of 2021 enabling our organisation to 'act as an association of representatives.'
Whilst engaging a 'Representative' is not mandatory, we would strongly recommend having an intermediary like ourselves assisting you for the following reasons:
- We can provide assistance with the Nice Classification Process and help in selecting the relevant Goods & Services.
- We will perform basic checks to compare already existing marks through the EUIPO's comprehensive search function (eSearch Plus and/or TM View Option) and ensure that the application has a good chance of success. This is particularly important because trademark applications can be refused and no refunds are given.
- We are empowered to not only check but submit the application on your behalf (whilst simultaneously also generating & opening an Owner ID area).
- We can provide recommendations (based on our experience & knowledge) as to whether or not to file a 'Word Mark', 'Figurative Mark', 'Shape Mark' or 'Figurative Mark' containing word elements.
- We will monitor the application process (including communication with the EUIPO directly) so you do not need to worry about a thing.
- We have registered trademarks for an array of customers (including start-ups, medium sized companies and multi-national corporations).
- Our team is composed of lawyers and legal professionals - who always endeavour to keep up-to-date with the latest amendments & updates.
Fees & Payments.
Apart from administrative fees to members of DWP's staff, the application fee costs EUR 850 and enables you to choose 1 Nice classification. For an additional fee of EUR 50, you can add a second class and for three or more classes you will need to pay EUR 150 for each class. This latter decision is entirely up to you.
Protecting your identity and work is essential especially when preying eyes might seek to copy some of your methods or trends to improve their business. Alternatively, a growing business with huge potential and market depth would do well to commence protecting its brand. In some extreme scenarios, envious competitors might also seek a more blatant approach - by copying your figurative marks or company name!
That is why, here at DWP Dr Werner & Partner, we are fully aware of the advantages that an EU Trademark may offer. We believe that innovative ideas and quality brands deserve to be protected accordingly.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.