How to trademark a phrase in the EU

Some biggest brands almost always trademark a phrase to summarize the company concept and identity; it could be developed to slogan, tagline, catchy phrase, enterprises motto, etc. It´s often referred to ¨brands¨. Such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings[i]. It provides brand equity for a company as it strictly prevents its use or/and the use of a similar phrase on the related services and products similar to yours. And sometimes a trademark phrase could be the most important asset in a company.

How to trademark a phrase? To make your trademark exclusive to you, the first step is to conduct a complete search of registered trademarks, as part of an overall examination process. Make sure you are the first one in your type of business that using this phrase, the European Union Intellectual Office will search the database of trademarks when you submit the application. The trademark phrases that are already used or there are similar ones existed will be refused.

Keep in mind that preventing your trademark phrase from infringement by unauthorized persons is your responsibility. Great ideas value only when it can be legally claimed. There are some factors as following described for the courts to determine trademark likelihood of confusion:

            1.       Strength of the plaintiff’s mark

  1. Similarities between the marks (in appearance, sound, or meaning)
  2. Proximity in channels of trade and marketing of the products on which the marks are used
  3. Likelihood that the plaintiff will expand its mark into defendant’s line of business (”bridging the gap”)
  4. Defendant’s intent in adopting the mark
  5. Product relatedness
  6. Consumer traits (sophistication and care)
  7. Whether there has been any actual confusion.[ii]

To trademark a phrase in the EU, the process is divided into 4 workflow periods: examination, opposition, registration and appeal. An online application at EUIPO (European Union Intellectual Property Office) costs 850 Euros and once it’s registered, the trademark can be renewed indefinitely every 10 years. Last but not the least, national level trademarks and regional trade marks are necessary for users who do not want or need protection of their trade marks at EU level[iii]. Start the application process as soon as possible, it will normally take 5-9 months, and wait for review and perhaps objection.

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[i] Article 2, Directive 2008/95/EC of the European Parliament and of the Council

[ii] MarkLaw Trademark Resources, *these factors grew out of the now-famous case, Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2nd Cir. 1961), and are sometimes referred to as the Polaroid Test.

[iii] [iii] EUIPO (European Union Intellectual Property Office)