Why to Register a US Trademark in the European Union?

In today’s global economy the competition is growing worldwide. As the world becomes smaller, many companies want to sell and offer their products and services outside of the United States.

Trademark protection in one country does not give any protection in other countries. A trademark registered in the United States is only effective in the United States, and will not provide any protection against infringing uses in the European Union. In the United States a trademark must be in use in commerce before a federal trademark will be granted. This rule does not exist in the European Union. However, the use in commerce may have to be undertaken at some point after registration. Therefore, in the European Union, trademark protection can be granted before the use has commenced. Furthermore, to maintain the validity of a trademark it is sufficient to use the mark in only one country of the EU.

If a company seeks protection in one or more of the 27 member states of the European Union, a Community Trade Mark (CTM) will be the best alternative. The European Union provides a unified registration system which is administered by an internal agency (OHIM). The OHIM is also responsible for registered Community designs. If the applicant files a trademark and it is granted, the trademark will provide protection in all 27 countries within the European Union. A CTM has an initial validation period of 10 years, and can be renewed continually if desired.

For a CMT registration the European Office of Harmonization for the Internal Market will charge fees starting from € 900. Finally, a CTM registration can claim priority from an earlier application under the Paris Convention. Before the registration of a trademark in the EU it is necessary to do research in all countries of the EU because a trademark may be registered in only one country as a national trademark. A common mistake that companies make is failing to ensure that they are the owner of a mark before applying in other countries in the EU. Before the applicant plans to extend the trademark, he should make sure that he has a clearly established ownership. Through the entire process, it is advisable to hire a trademark attorney to help with trademark search, clearance and filing efforts.