Most EU trademark problems start before filing: wrong classes, no search for earlier marks, or no plan for opposition. This guide covers the three.
Choosing classes
The Nice Classification has 45 classes: classes 1 to 34 are goods and classes 35 to 45 are services. Some common ones for ecommerce sellers are class 3 (cosmetics), class 9 (apparatus and software), class 18 (bags), class 21 (household utensils), class 25 (clothing), class 28 (games and toys) and class 35 (advertising and retail services).
Cover the products you sell and the ones you will launch soon, but do not add classes you will never use: each extra class adds to the official fee.
Search earlier marks first
The EUIPO examines formalities and absolute grounds for refusal, but it does not check conflicts with earlier marks by itself. A conflict usually appears later, when the owner of an earlier mark opposes. Searching the EUIPO database and similar names, in the same and related classes, before filing reduces that risk.
The opposition period
After examination the mark is published, and third parties have three months to oppose. If nobody does, the mark is registered. If someone does, the case can take much longer and may end in an agreement, a limitation of the goods or the loss of the application. A unitary EU mark is judged as a whole, so an opposition based on one country can affect the whole application.
A short checklist
- Same or similar name already registered in your classes.
- Classes that match your real products.
- The holder is the company that sells.
- A plan if an opposition arrives.
To see how this fits the whole process read how to register an EU trademark from outside the EU. If you want a review before you file, write to us from trademark registration.