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There is more to European trademarks than just the EUTM

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In the first article of a four-part series, IP experts from across Zacco explore some of the issues that are frequently raised by companies, beginning with addressing some of the complexities of entering the European market from abroad and explaining what approaches could be taken

Foreign agents face numerous considerations with regard to trademark registration when entering the European market from abroad. Approaching Europe as a single entity, or focusing only on the EU trademark, excludes some of its richest and largest markets.

In this article, senior figures from Zacco, which already operates as a gateway to Europe for many global clients with multinational portfolios, provide insight into this issue and suggestions for how to decide on the most practical approach when entering European markets.

Filing process

There are two main approaches to the filing process for a trademark registration for foreign agents entering the European market, according to Thomas Mølsgaard, the trademark director for Denmark and Germany at Zacco.

“An EUTM often offers the most practical approach for protection within the European Union, but it excludes some significant markets in Europe, such as the UK, Norway, and Switzerland,” Mølsgaard says. “It also excludes certain territories, such as Greenland, the Faroe Islands, the Northern part of Cyprus or San Marino, so an EUTM should be combined with national registrations in your key markets to ensure that you are covered.”

“Alternatively, a foreign applicant within one of the agreement countries of the Madrid Protocol/Arrangement could potentially register their rights via the WIPO route. This would involve selecting the EU as one of the designated ‘countries’ alongside others within the system but we would still recommend a conversation with a trademark consultant to explore if a national registration might be more appropriate to cover all the territories required.”

Term and fees

The length of protection of a trademark under the above system and the fees and conditions of use depend on the route taken. Fees can change considerably based on intellectual property (IP) strategies, among other decisions.

“As a rule of thumb, following the international WIPO route outlined above is often more expensive to establish but cheaper to maintain, but this is not true of all combinations of regions and territories covered,” Claes Agnvall, senior partner at Zacco Sweden, says. “All countries within Europe have a standard grant of ten years and have a ‘use’ requirement after five years.”

Factors to consider

Lars Henrik Stoud Platou, a partner at Zacco Norway, identifies several factors that trademark agents should consider when entering the European market.

“It is important to start by making a decision on the most practical approach to obtaining the required geographical scope of protection,” he says. “Such decisions should incorporate both the markets where you intend to advertise or sell your goods or services and, in some cases, where you intend to produce them, although this is dependent on your commercial situation.

“Similarly, you should examine the relevant trademark classes most appropriate for your business strategy and secure relevant protection across those most important, as well as considering those that might be appropriate for future use, such as in the growing area of virtual products, for example.”

Strategies for trademark agents

The limitations of the EUTM, as alluded to above, should be prominent in the thinking of trademark agents when planning their strategy.

Stoud Platou acknowledges that “a significant factor is exploring how national or regional usage requirements might impact the strategy chosen. For example, would it make sense to register now and risk non-use cancellation in five years if you’re not ready to enter the market within that time? Conversely, would it make more sense to delay filing until you are ready, but risk losing ‘first to file’ exclusivity, which could result in a costly legal battle later on.”

Both routes come with benefits and risks, and it is important to seek professional advice before making any decision.

The multi-jurisdictional protection provided for under the Madrid Protocol, which the EU ratified in 2004, is another factor to consider when formulating an IP protection strategy.

“The Madrid Protocol can be an effective means of securing protection within the EU, but it still has the same limitations,” Mølsgaard says. “It can often be a good idea to designate your key markets within Europe, alongside designating the EU as a whole, as this can maintain coverage in additional territories, including protection in Greenland and the Faroe Islands should you designate Denmark, for example.”

How Zacco can help

Zacco has offices across Northern Europe, operating as a strategic partner and gateway to Europe for some of the world’s most famous brands and most IP-intensive organisations. With over 150 years of experience in IP, the firm’s colleagues are experts in a wide range of traditional and emerging technologies, and can assist clients with everything from patents to trademarks and online branding, from their development all the way through to their security and enforcement.

As an organisation, Zacco offers a combination of regulatory knowledge, technical expertise, and commercial awareness, and develops IP strategies that suit the present and future needs of clients.

The second article in the series explores the potential benefits of a hybrid IP search model.

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