European Union trade mark regulation
Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation has been published in the Official Journal of the European Union. The Amending Regulation will enter into force on 23 March 2016. From that day, the Office will be called the European Union Intellectual Property Office (EUIPO) and the Community trade mark will be called the European Union trade mark. More information
If someone else has already registered your mark, it is not available. You can save time and money by searching for marks that could conflict with yours before you apply. In the European Union there are around seven million registered trade marks.
It costs nothing to search, and the information you find is crucial to your application. If someone already owns a trade mark they might want to object to your application.
The TMview database contains information from most of the EU national IP offices, OHIM and a number of international partner offices outside the EU on trade mark applications and registered marks. A trade mark applied for or registered at national level before yours could pose a threat to your application. So make sure you also take any such trade mark into account.
For more details about trade marks filed with OHIM, use eSearch.
Trade marks registered at national level or with OHIMTMview
There are three main factors to take into account when analysing the search results: the timing, the sign, and the goods & services. Checking these factors does not rule out risks but does minimise them.
Trade marks are protected on a 'first come, first served' basis.
Trade mark protection begins when a legal filing date is given.
However, when establishing who has filed first, it is not only the filing date of the potential competitor's trade mark that has to be taken into account, but also any priority date.
When filling in the trade mark application form, applicants are asked to complete the part relating to priority. They can do this if they have applied for the same trade mark in another jurisdiction within the previous six months. If the priority date is accepted by OHIM, the filing date from the first application will become the benchmark for calculating who filed first.
Trade mark priority period
Two lists presented below are dependent on each other. First element of first list is connected with first element of the second list and so on.
Trade mark B
Trade mark A
Trade mark B
Filing date in the USA
Filing date at OHIM
Filing date at OHIM
* In this case, it means that trade mark B may oppose trade mark A even if in 'time-related' terms, trade mark A was the first filed in the EU.
When comparing your trade mark with earlier ones, you need to put yourself in the position of a typical consumer. What you have to ask yourself is: 'Is a consumer likely to believe that my trade mark already belongs to someone else?' If the answer is 'yes', you might have a problem.
By the way, don't limit your search to identical trade marks. Signs similar to yours could also pose a threat.
In the majority of cases, there must also be a link between the goods and services that you offer, and those applied for in the potentially conflicting mark. Here again, the goods and services that you provide do not need to be identical to those of the other party. Even if they are only similar, they could pose a threat.
What should you do with your search results?
If you find that your mark or one like it has already been registered or applied for, you have a number of options
- Negotiate: contact the owner of the earlier trade mark to reach an agreement (many identical or similar trade marks coexist in the market)
- Risk registration: go ahead and file your application and risk opposition (the decision as to whether to object to a CTM application depends on many factors; the existence of an earlier registration does not prevent you from applying)
- Challenge: challenge the first trade mark
- Give up: go no further because the risk of opposition is too great