Author: Ivan Chebotarov, CEO & Co-Founder of WoBorders
Even if you have an active business in Ukraine and a trademark registered there, Ukrainian registration alone does not protect your brand in the EU. So, when entering European markets, consider registering your trademark in Europe.
If you do business in only one EU country, national registration and trademark protection in that country alone may be sufficient. When doing business across the European Union, register a trademark with the EUIPO (European Union Intellectual Property Office).
A single application to register a European trademark protects all 27 EU member states. If you need protection outside the EU, you can use the WIPO Madrid System. It lets you file a single international application based on a national or regional registration and specify the countries or regions where the applicant wants protection. The relevant national or regional authority makes the final decision regarding trademark protection in each country.
What are the benefits of registering a trademark in the EU?
Trademark registration grants the owner exclusive rights to distinctive marks, such as names, logos, colors, images, patterns, shapes, product packaging, or sounds, which identify products and distinguish goods or services from those of others. In most countries, trademark protection lasts for 10 years from the date the trademark application is filed. You can renew your trademark protection indefinitely every 10 years. Once you own a trademark, you can sell it to someone else or grant permission to use it through a special licensing agreement.
A trademark is registered for specific goods or services in accordance with the Nice Agreement. The Nice Classification classifies goods into classes 1 through 34 and services into classes 35 through 45.
It is important to file applications for the classes of goods and services that match your business, as this directly affects how strongly your trademark is protected in the EU. Also, you cannot simply “add” new classes after filing an application; you must file a new application. If you wish to include more than one class of goods or services, a fee is payable for each additional class.
How to check a trademark before registration
Before filing, you should check for any conflicts with existing trademarks. Verify whether identical or similar trademarks exist, which classes they are registered in, whether corresponding national trademarks exist in EU countries, and whether any applications have been filed previously.
The EUIPO rejects an application for an EU trademark if grounds for refusal exist even in only part of the European Union.
Before filing an application, check not only for exact name matches but also for trademarks similar in spelling, pronunciation, and meaning. You should also verify the goods and services already registered under the trademark.
Who is the best entity to register a trademark with: an individual or a company?
A trademark can be registered in the name of either an individual or a legal entity. The main difference is who owns the brand rights and who controls the trademark if the business structure changes or the business dissolves.
Official fees and processing times are also the same. For applicants from Ukraine, one additional consideration applies: because Ukraine is not part of the EEA, a representative in the EEA may be required to work with the EUIPO. This requirement applies to any applicant located outside the EEA, not just individuals.
If there already is registered company in the EU, trademarks are more often registered in the company’s name, since this eliminates the need to separately transfer ownership or the right to use the trademark from an individual to the company. If, however, the trademark is registered in an individual’s name, that individual may transfer the right to use the trademark to their own company or re-register the trademark in the name of a legal entity.
If an individual owns a trademark but a company uses it, the right to use it must be formalized separately, for example, through a contract. The rights of use are transferred under the terms of the contract. A company’s use of a trademark owned by an individual may have tax implications. These depend on the owner’s tax residency and the terms of the transfer of rights. In addition, the applicant’s physical address is public information and is entered into a public registry. The registry will contain two sections: “Owners” (names and addresses—physical and mailing) and “Representatives” (address of the local representative).
Steps for registering a trademark in the EU
- Determine exactly what you are registering: a name, a logo, or several marks
- Identify the goods/services and the classes to which they belong
- Identify the territories that need protection
- Conduct a professional search for similar trademarks and assess the risk of conflict
- Determine the trademark owner—an individual or a company
- Prepare and file a trademark registration application
- Monitor the examination process and any potential opposition
- After registration, monitor usage and new applications filed by competitors
What to do after registering a Trademark
Entry in the trademark registry does not automatically protect competitors. After registering a trademark, the owner must use it for the goods or services covered by the registration and monitor new applications for similar names. If someone files an application for a similar trademark, the EUIPO may notify the owner of the previously registered trademark via email through surveillance letters. If the owner of the earlier trademark believes the new application infringes their rights, they may file an opposition within 3 months of publication. Special trademark monitoring services are available for this purpose. For example, TMview allows you to search for trademarks across various government agencies.
Frequently Asked Questions about Trademark registration in the EU
I already own the domain brand.com. Does that mean I have the rights to the brand?
No. Owning a domain name does not mean that you automatically have rights to the corresponding trademark. A domain name and a trademark are different legal protections. A domain name gives you the right to use a specific Internet address. A trademark grants exclusive rights to the corresponding designation with respect to specific goods and services.
If you have registered brand.com, this in itself does not prevent another person from registering “BRAND” as a trademark, provided there are no other obstacles to doing so. Similarly, registering a trademark does not automatically grant you the corresponding domain name; someone else may already own it.
Does the company name ABC OÜ protect the ABC trademark?
A company name and a trademark are distinct legal objects. The mere fact that ABC OÜ is registered in the commercial register does not automatically confer the right to the ABC trademark throughout the EU. Furthermore, the EUIPO explicitly classifies company names as “other prior rights” that may serve as grounds for opposing a later trademark.
If someone has registered a trademark, can they take my domain away?
The mere registration of a trademark does not mean that the owner can automatically take your domain name.
In the event of a dispute over a domain name, the following factors are considered: when it was registered, the trademark owner's rights, whether the domain name owner had legitimate grounds to use it, and whether the registration was made in bad faith.
Can you lose a trademark if you don't use it?
During the first 5 years after registration, there is no requirement to prove use of the trademark. If, after that, the trademark is not used continuously for 5 years in connection with the relevant goods or services, an interested party may file a petition to revoke it on the grounds of non-use.
How long does it take to register a trademark in the EU?
EU trademark registration typically takes about 5–6 months. For Fast Track applications, the process may be shorter—approximately 4–5 months. If objections or additional questions arise during the examination, the process takes longer.
See also the answers to frequently asked questions on the website EUIPO.
