Frequently Asked Questions

What services are provided by Agency TRIA ROBIT?

 

Trademark

What is a trademark?

What is a EU Trade Mark (EUTM)?

What is the International Classification of Goods and Services?

What is the conventional priority of EUTM?

What is the seniority?

What is a national search?

Does a word trademark registration protect a logo?

What is the fee for EUTM registration?

What is EUTM registration procedure?

What steps shall be taken, if the search revealed a similar trademark?

How much time does EUTM registration take?

What is EUTM validity term?

When do trademark exclusive rights come into force?

 

Trademark search

What is a trademark search?

Why is it necessary to conduct a preliminary search?

Why is it necessary to conduct a post registration trademark search?

 

Design

What is a design?

What is a Community design (RCD)?

What can be registered as RCD?

What is the International Classification for Industrial Designs?

Is the description necessary for RCD?

What are RCD protection criteria?

What is RCD registration fee?

How many designs can be included into one application?

What is deferment of publication?

What is RCD registration procedure?

What is the conventional priority of RCD?

How RCD can be objected?

Is unregistered design protected?

How long is RCD registration procedure?

How many images of the designs are necessary?

What is RCD validity term?

When do RCD exclusive rights come into force?

 


 

What services does Agency TRIA ROBIT provide?

Agency TRIA ROBIT provides its clients a full range of services in the field of intellectual property protection including patents, industrial designs, trademarks and other objects of intellectual property. The European website of Agency TRIA ROBIT offers online EU Trade Marks (EUTM) and Community Design (RCD) registration, as well as trademark search services.

 

What is a trademark?

A trademark is a sign which serves to distinguish the goods and services of one organisation from those of another.

 

What is a EU Trade Mark (EUTM)?

EU Trade Mark (EUTM) is a trademark valid in the territory of the European Union. EUTM is registered with the European Union Intellectual Property Office (EUIPO) in Alicante, Spain. Protection of EUTM covers all 28 member states, it cannot be limited by one or some separate countries. EUTM registration grants its owner a right to prohibit third persons from the use of the trademark identical or similar to the registered mark without the consent of the registered trademark’s owner.

 

What is the International Classification of Goods and Services?

The trademark is registered for certain goods/services. All goods/services are split into classes according to the International Classification of Goods and Services. It serves for defining the scope of trademark protection. The use of the International Classification is obligatory for EUTM registration. The list of goods/services must be worded in order to clearly and precisely describe the goods/services and allow for classification thereof according to the International Classification.

 

What is the conventional priority of EUTM?

Conventional priority can be set according to the date of filing of the first application for this mark in the member state of the Paris Convention for the protection of industrial property, WTO or in the state having bilateral agreement with EUIPO if EUTM application is filed within six months since filing date of the first application. In order to claim conventional priority on filing EUTM application or within two months it is necessary to indicate the number of the first application, filing date and the country in which the first application was filed.

 

What is the seniority?

If the applicant or the owner of EUTM already has national or international registration of the same trademark valid in one or several countries of the European Union in respect of identical goods/services, he can claim seniority for EUTM, preserving earlier rights to this mark in these countries, at that these national or international registrations can be lapsed. Seniority is taken into account on considering the issue of earlier rights conflict in this country.

 

What is a national search?

A national search is conducted by National Patent Offices of 7 countries (Czech Republic, Denmark, Greece, Lithuania, Hungary, Romania and Slovakia) after filing the EUTM application on request of the OHIM, if on filing the application the applicant ordered this search. EUIPO search reports are forwarded to the applicant as well as to the owners of the found earlier trademarks. Therefore, the owners of the earlier rights are notified on the filing of the later identical or similar trademark and can probably proceed with preparing and filing an opposition. This service is subject to a certain fee by the EUIPO. 

 

Does a word trademark registration protect a logo?

EUTM trademark is protected as registered. The owner of the trademark can prohibit third persons from using the identical or similar trademark. Therefore, in order to protect a logo, its registration as EUTM is necessary; registration of the word trademark does not protect a graphical image.

 

What is the official fee for EUTM registration?

The official fee for EUTM registration in one class of the International Classification of Goods and Services when filing online amounts 850 EUR. Additionally, the fee for the second class is 50 EUR, for each class in excess of two amounts 150 EUR and 84 EUR are paid in case the applicant wishes to conduct the national search.

 

What is EUTM registration procedure?

For registration of EUTM it is necessary to file an application with EUIPO. If the applicant is not a Community resident, he shall appoint a representative, advisable from the from EUIPO list of the professional representatives. EUIPO checks the contents of the application, conducts trademark examination on absolute grounds (checks whether the trademark complies with the definition of the trademark, whether it is distinctive enough, whether it complies with the norms of public morality and is not confusing on the side of the consumers), as well as it conducts the search amongst EU trademarks. The results of the search are forwarded to the applicant and the owners of the found registrations. Moreover, the trademark is published so that third persons, which consider that this trademark is infringing their earlier rights, could file an opposition. If within three months no opposition is filed, the trademark is registered and a certificate of EUTM registration is published electronically without any further actions.

 

What step shall be taken if the search has revealed a similar trademark?

EUIPO conducts the trademark search amongst registered EUTM and forwards the search results to the applicant and the owner of the found registrations. Even if the search has revealed similar marks, it is not necessary to immediately withdraw the application, as the owner of the earlier registration will not obligatory file the opposition. In some cases it is possible to try to remove the risk of filing the opposition by limiting the list of goods. But the best way is to wait until the application is published for possible opposition and then to act basing on the circumstances.

 

How much time does EUTM registration take?

If EUTM registration procedure goes without any delay, requests and oppositions, registration takes approximately 4-6 months since filing date.

 

What is EUTM validity term?

EUTM validity time is unlimited. For maintaining registration it is necessary to renew the mark every 10 years along with payment of the corresponding renewal fee.

 

When do trademark exclusive rights come in force?

Exclusive rights to EUTM enter into force since EUTM publication date.

 

What is a trademark search?

The trademark search is selection of trademarks according to certain criteria: word or part thereof, graphical elements, goods/services, etc. The trademark search allows for identification of identical or similar trademarks, registered for all or homogenous goods.

 

Why a preliminary trademark search is necessary?

The preliminary search can reveal the existence of the earlier registered trademarks, which can constitute a ground for filing an opposition by their owners. Depending on the trademark search results, the decision on the reasonability of trademark registration can be taken in the certain territory, on the list of goods/services, on the composition of trademark, etc. However, it shall be taken into account that even in case similar trademarks are revealed, the trademark can be registered, if the owner of the revealed marks does not file the opposition.

 

Why a post trademark registration search is necessary?

EUTM registration procedure does not provide for a possibility to refuse trademark registration basing on the presence of the earlier identical or similar registered trademark. Therefore, the owner itself shall trace whether somebody else has filed a trademark application and in case identical or similar trademark is revealed, the owner shall take a decision whether to file an opposition against this registration.

 

What is a design?

A design is the outward appearance of a product or part of it, resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation.

 

What is a Registered Community Design (RCD)?

Registered Community Design (RCD) is valid in the territory of the European Union. RCD is registered with the European Union Intellectual Property Office (EUIPO) in Alicante, Spain. RCD protection covers all 28 countries of the European Union; it cannot be limited by one or several separate countries. RCD registration gives its owner exclusive rights to prohibit the third persons from copying or imitating the same or similar design without the consent of the owner.

 

What can be registered as RCD?

As RCD the following can be registered: outer appearance of the article, packaging, ornamentation, flat image, logo, etc.

 

What is the International Classification for Industrial Designs?

The International Classification for Industrial Designs (Locarno Classification) is the list of products divided into 32 classes. It is strongly recommended to use the terms of the Locarno Classification in RCD application for indicating the product in respect of which RCD is registered. The title of the product does not influence the scope of RCD protection.

 

Is description necessary for RCD?

Description is not obligatory, but it can be filed for clarifying the images of RCD. Description is not published, it does not have any legal force and it does not influence the scope of RCD protection.

 

What are RCD protection criteria?

In order to meet the protection criteria RCD shall be new and shall have individual character. Design is considered as new, if it differs from the industrial designs, which were disclosed earlier. However, the grace period of 12 months is provided, prior to filing date, within which the article can be present in the market without losing its novelty. In other words, the fact that you have disclosed the new industrial design prior to filing thereof does not invalidate your registration due to the absence of novelty, if it has been done not earlier than one year prior to filing thereof. This allows for testing the new product in the market without expenses for its registration.

Design has individual character, if the overall impression, which it provides to the skilled in the art, differs from the overall impression, which is provided by another design. Industrial designs are considered as identical, if features thereof differ only in insignificant details.

 

What is RCD registration fee?

Official fee for filing RCD application and registration thereof amounts 350 EUR. If one application includes several designs, this amount for each additional design is reduced for 50 %. If the number of the designs exceeds 10, the official fee will amount 80 EUR for each design in excess of 10.

 

How many designs can be included into one application?

One application can include unlimited number of designs, if they relate to one and the same class of 32 classes of the Locarno Classification and if they are filed in the name of one applicant. The exclusion is Class 32.00 “ornamentation”: the unlimited number of designs can be filed in two classes one of which is Class 32.00 “ornamentation”. There is no requirement for the unity of the designer’s concept and no obligatory condition that the articles included into the application shall be the embodiments of one article. OHIM issues one certificate for each design.

 

What is deferred publication?

RCD can be published not right after registration thereof, but also within 30 months. For this on filing the RCD application the deferred publication is requested. In this case RCD will be published upon payment of the registration fee. The official fee for publication deferment is 40 EUR for the first RCD, 20 EUR for RCD from the second up to the tenth and 10 EUR for each RCD in excess of 10.

 

What is RCD registration procedure?

RCD application is filed with OHIM. If the applicant is not a EU resident, he shall appoint the representative preferably from the list of the professional OHIM representatives. EUIPO checks the contents of the application, classification, its correspondence with RCD definition and the norms of public morality, it also checks whether RCD is an article and whether all the filed images relate to one and the same article. Then RCD is registered and the data on RCD and the registration certificate are published.

 

What is the conventional priority of RCD?

Conventional priority can be set according to the filing date of the first application in respect of this design in the member state of the Paris Convention for the protection of industrial property, WTO member or in the state that has a bilateral agreement with OHIM, if RCD is filed within period of 6 months since filing date of the first application. For claiming conventional priority on filing RCD application it is necessary to mention the number of the first application, filing date and the country in which the first application was filed. Then, the copy of the first application certified by the Patent Office of the country of the first application shall be filed with EUIPO.

 

How RCD can be objected?

OHIM does not conduct any examination of RCD, does not check whether RCD possesses novelty or individual character and does not check whether RCD infringes third person rights. Any interested person can file with EUIPO  a request on considering RCD as invalid.

 

Is unregistered design protected?

Within three years since the disclosure of the design it is protected from copying as unregistered community design (UCD). For comparison, RCD is protected from copying and reproduction for a period of 25 years.

 

How long is RCD registration procedure?

RCD registration procedure takes from 5 to 8 days, if the application is executed correctly and no requests are issued in respect of the application. Certificate is published electronically and the paper copy is not delivered. The filing date of the application is considered as registration date.

 

How many images of the design are necessary?

RCD is protected as shown on the representations or photos. Design images shall unambiguously reflect the outer appearance of the article. The minimum number of the images for one design is – 1, the maximum – 7. More images are allowed in exceptional cases.

 

What is RCD validity term?

RCD is valid for 5 years since filing date of the application (without payment of annuities) and it can be renewed four times for another 5 years. The maximum validity period is 25 years.

 

When do exclusive rights to RCD come into force?

Exclusive rights to the use of RCD come into force since its registration date in OHIM. RCD registration allows for a possibility to immediately take steps against the infringers, for example, in order to cease the import of pirated goods at the customs of the European Union.

 

With best regards,
Agency TRIA ROBIT 

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