2-3-1 EUTM Examination Myths and Truths

1. When filing the trade mark application providing a list of goods and services is mandatory.

2. If any of the required information is not provided in the application, it is automatically rejected.

3. Payment of the basic fee must be made on the day of the filing date.

4. The applicant may be asked to remedy any deficiencies in the application within a two-month period from notification of the deficiency letter.

5. The time limit to remedy deficiencies is extendable.

6. Failing to remedy deficiencies within the time limit means the application will be ‘deemed not filed’ and the paid fee will not be returned.

7. Providing missing information within the time limit does not have any effect on the filing date.

8. Any decision partially or wholly refusing an EUTM application must give the grounds on which the EUTM application is refused.

9. As far as classification is concerned, the goods and services should be outlined in broad terms using the Nice Classification headings.

10. The goods and services must fall under up to three classes.

11.  It is recommended to claim a wider range of goods and/or services than necessary to take into account future options.

12. Broadening your specification, you’ll reduce the risk of conflict with other marks.

13. Once you have filed your application you won’t be able to add to your specification.

14. To be eligible for registration, your trade mark must be distinctive and descriptive.

15. A trade mark is not distinctive if the ground for refusal exists in only a part of the Community.

16. To assess the meaning of a word, a language check is undertaken in all European languages.

17. Assessment is carried out by reference to the perception of the sign by ‘the average consumer’.

18. Absolute grounds for refusal cover, among other things, signs that are contrary to public policy and the principles of morality, as well as those that can be deceptive or misleading.

19. After carrying out a search in the EUTM database for identical and/or similar marks, the Office informs owners of previously registered trade marks or trade mark applications quoted in the report about your trade mark application.

20. If there is an objection, the applicant must respond to it within two months maximum.