Trademark Registration: From Application to Registration

The legal framework

Trademark rights arise in two ways: through use and through registration. An unregistered sign may attract some protection under national law, for example under national rules on unfair competition, but it differs per country and is generally narrow, difficult to prove and confined to the area of use. Registration gives a presumption of validity, protection across the territory of the registration, and standing to oppose later conflicting marks. Protection is territorial, so the question is always where to register.

There are three main routes. An EU trade mark is filed with the EUIPO under Regulation (EU) 2017/1001 (EUTMR) and covers all Member States as one right. A Benelux trademark is a regional alternative: it is filed with the Benelux Office for Intellectual Property (BOIP) under the Benelux Convention on Intellectual Property (BCIP) and covers the three Benelux countries. An international registration under the Madrid System is filed through an office of origin, administered by WIPO, and extended to the countries designated; it depends on a basic application or registration.

A registration is valid for ten years from the filing date and can be renewed for further ten-year periods.

In practice

Filing and classification

The application names the applicant, shows the sign and lists the goods and services, classified according to the Nice classification. The filing date is secured once the minimum requirements are met, and the fee is due shortly after. If you filed a first application in a Paris Convention country in the last six months, you can claim priority and your date goes back to that first filing.

Examination

The EUIPO and the BOIP examine absolute grounds ex officio: whether the sign is descriptive, lacks distinctive character, is deceptive or contrary to public policy (Article 7 EUTMR). They do not check earlier marks of other owners. If the office raises an objection, you are given a period to respond or to limit the specification. For an EU mark, an absolute ground existing in part of the Union is enough for refusal. If you want a faster route in the EU, see EUIPO Fast Track.

Publication and opposition

An accepted application is published. Owners of earlier rights then have a limited time to oppose: three months from publication at the EUIPO (Article 46 EUTMR) and two months at the BOIP. The BOIP period cannot be extended. In both systems the parties usually have a cooling-off period to negotiate. If no opposition is filed, or if it fails, the mark is registered. If it succeeds, the application is refused in whole or in part. Opposition is explained in when to oppose a trademark.

International extension

Under the Madrid System, WIPO checks the formalities and each designated office examines the mark under its own law. A designated country can refuse protection within a fixed period, usually 12 months and in some cases 18. For the first five years the international registration depends on the basic mark: if it falls, the international registration falls with it, although it can be converted into national applications.

After registration

A registration is only as good as its upkeep. Four things matter:

• Renewal. Marks must be renewed every ten years, with a short grace period after expiry at a surcharge. Missing a date can mean losing the right. Our portfolio and deadline technology dockets the dates, and every computed date is confirmed by a person.
• Use. After five years from registration, the owner must be able to show genuine use for the registered goods and services (Articles 18 and 58 EUTMR), or the mark can be revoked in whole or in part.
• Enforcement. A mark that is never defended against similar signs can lose its force. An owner who knowingly tolerates a later mark for five successive years can no longer have it invalidated (Article 61 EUTMR).
• Changes. Transfers, licences, name changes and limitations should be recorded, as described in our guide to transferring and licensing a trademark.

A fashion label with a Benelux registration for clothing illustrates it. It starts selling online in Germany and France. Its Benelux mark does not cover them, so it files an EU trade mark claiming the Benelux filing date as priority within six months. It chooses the specification with care: clothing, footwear and headgear, and the online retail service. Three months after publication, no one opposes, and the mark is registered. Five years later it asks itself whether each item it listed was used.

Frequently asked questions

How long does registration take?

It depends on the office, on whether the office raises objections and whether anyone opposes. An application without objections or opposition is quicker, but we cannot give a reliable fixed duration, because it is set by the office and third parties, not by us.

Do I need to register if I already use the mark?

Use can build some rights, but registration is far stronger and easier to enforce. It also protects beyond the area where you currently trade.

Can I register in several countries with one application?

Yes: an EU trade mark covers all Member States, and the Madrid System allows a single application for several countries. Each route has its own conditions and dependencies.

What does it cost?

Fees depend on the office, the number of classes and the route. Budgeting for multi-jurisdiction filings explains the elements.

How this connects

Trademark registration puts this process into one service, with our filing technology preparing applications, the IP cost estimator showing costs by jurisdiction and the portfolio and renewals technology following the dates after registration.