3 Tips For Australian Businesses Searching For EU Trade Marks
Emily Young
As the world’s largest trading bloc, the second-largest economy globally, and one of Australia’s largest trading partners, it is common for Australian businesses to trade with the European Union (EU). Your intellectual property is a valuable asset, and protecting it when doing business overseas is important. This article will take you through tips for Australian businesses searching for EU trade marks.
1. Know Where You Want to Trade
Before you do your trade mark search, consider where in Europe you want to trade. There are a few options for submitting your trade mark application, which will impact how you search for EU trade marks. Your registration method will also impact the cost of registration and potentially the availability of your trade mark. Your options for registration include:
| National registration | If you only want to register your trade mark in one or two European countries, national registration might be a good option. You can register your trade mark application directly with the national trade mark office of an EU member state. |
| Regional registration | If you want to register your trade mark in Belgium, the Netherlands and Luxembourg, consider registering with the Benelux Office of Intellectual Property. |
| EU-wide registration | Applications for a European Union Trade Mark (EUTM) through the EU Intellectual Property Office (EUIPO) will register you in 27 member states of the EU. This means that one similar trade mark in one member state is enough to reject your entire application. |
| International registration | You can use your existing Australian trade mark to file for an international trade mark using the Madrid Protocol. However, it is important to note that not all members of the EU are part of the Madrid Protocol. |
2. Know Your Search Options
The EUIPO has an ‘eSearch plus’ database that gives your access to search all EU trade marks. This database is also available for mobile download. The eSearch plus tool has an advanced search mode that allows you to carry out detailed searches for European trade marks using a number of criteria. See this website for more information on how to get the most out of your eSearch plus advanced search. However, if you do not want to register your trade mark with the entire EU, using the EUIPO database may produce unnecessary results.
Most EU countries have their own trade mark search tool. For example, you can use the DPMAregister to search for German trade marks or the Benelux trade marks register to search for trade marks in Luxembourg, the Netherlands and Belgium. The World Intellectual Property Office (WIPO) also has the Global Brand Database available for you to search.
3. Search in More Than One Language
The EU is a diverse region linguistically. The EUIPO recognises English, French, German, Italian and Spanish as its official languages. Therefore, you will need to check any trade mark with a word element in all languages of the countries you plan to register your trade mark in. If you register your trade mark using a EUTM, you will have to check its availability in each official language. Remember, even if your trade mark does not sound the same in more than one language, it might be an infringement if the idea behind the trade mark is the same.
Key Takeaways
Your intellectual property is the most important asset of your business. If you plan on trading in Europe, it is important that you;
- consider which countries you will trade in;
- think about the best registration option for you; and
- make sure to conduct a thorough trade mark search.
If you need further legal assistance with trade marking your business in the European Union, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
If you plan on trading in the EU, protecting your trade mark in individual countries or the European Union as a whole is a great way to protect your intellectual property. Registering your trade mark will prevent other businesses from making, using or selling your product, and prevent you from infringing on someone else’s trade mark.
You can register your trade mark in the EU by either applying directly to specific countries or applying to the EU as a whole through the European Union Intellectual Property Office (EUIPO). Alternatively, you can use your existing Australian trade mark to file for an international trade mark using the Madrid Protocol. However, it is important to note that not all EU members are part of the Madrid Protocol.
European trade mark registration is valid for 10 years from the filing date. After this, you will have to renew your trade mark and pay a fee if you want to stay protected.
The cost of registering your trade mark in Europe will depend on which method you use to register your trade mark, as well as the specifics of your application. Protecting your IP can be very complex. For more information on trade mark protection, consider seeking advice from our experienced intellectual property lawyers.