International trademark registration for the EU

Updated time: 07 Jun, 2021, 19:42 (UTC+08:00)

Registering for international trademark protection is very important for any brand in a foreign market. However, applying for a trademark in the EU can be quite complex and time consuming unlike any other country.

One IBC - the one stop brand for international trademark registration services.

Trademarks in the EU are expensive and complicated because this is not just one but 27 countries in a union. One IBC has always tried to find a way to simplify this process and reduce any unnecessary cost.

One IBC applies for an EU-wide trademark directly at the European Union Intellectual Property Office (EUIPO) which has effect across all 27 member states. There is also geographical indication (GI) for foods and wines originated from a specific area and because of that possess certain qualities or a reputation. GI can also be effective EU-wide. One IBC can also help companies apply for a trademark on a national basis in said country.

EPO, one of the numerous offices for intellectual property in Europe

The IP system in the EU is complex and expensive due to the nature of this organization and its numerous members. Application for IP protection may cost much more in the EU than in other countries. IP law is complex therefore companies should consult One IBC to better understand and apply for IP protection correctly.

There are different trademark application methods as well as advantages, disadvantages and points to consider for each. Companies can apply through:

National route - Applications can be submitted directly to the national trademark office of an EU country. A national trademark can generally only be enforced in the country in which it is granted.
Regional route – This is a special option for the Benelux Union (Belgium, Netherlands and/ or Luxembourg). Companies operating in this region can apply for all three countries at the Benelux Office of Intellectual Property (BOIP).
EU-wide protection - Apply for a European Union Trademark (EUTM) at the EUIPO. This covers all 27 member states. However, any change or cancellation can only be in respect of the whole of the EU. EUTMs last for 10 years and are required to be renewed every 10 years from there on. Companies can also utilize the Madrid System to gain an EUTM.
International route – Companies with existing trademarks can file for EUTM via the Madrid System for the international registration of trademarks. This, however, does not cover all EU member states.

The official languages of the EUIPO are English, French, German, Italian and Spanish. Consider protecting translations and transliterations as well when applying for a trademark. Unregistered trademarks may have rights in some EU member states.

Companies should consider two things when applying through the Madrid system.

Check with the Global Brands Database to make sure the chosen trademark is available.
Consult the Madrid Goods and Services Manager database to know which products and services are acceptable in which jurisdictions.

One IBC offers services tailored to any customer’s need

Cost of an international trademark registration

The basic fee has to be paid within one month of EUIPO’s notification that they have received the application. EUIPO only starts processing and contacting the applicant after this fee has been paid. This fee includes a compulsory fee for the first class of product and service. The second class (if the applicant requires) will incur a small extra fee and any class afterwards will add a fixed amount.

Contact One IBC for detailed guidance to know which class of product and service the trademark belongs to. We also highly recommend getting a copy of the Certificate of registration because this is very useful in the future and is not expensive.

After obtaining an international trademark registration, owners have to renew it every 10 years. The renewal fee is structured similarly to the basic fee. Any extra class will incur an extra fee. There are also additional fees to expand the geographical scope of coverage or modify the trademark.