Article by Marco Saccenti, Graduated in Communication Sciences from the University of Turin, Master in Digital Marketing and with a long experience in a multinational tech company in Canavese in the R&D and Quality sectors. Marco founded Ponderata.it, his Digital Agency and is Community Manager at CNext Ivrea.

Note: This article was written in January 2024 with rules and procedures in force in 2023, following only the path of the entrepreneur interested in filing a trade mark at the European level (MUE).

The issue of intellectual property is a constantly evolving topic, fraught with challenges and subject to frequent revisions. In a complex landscape, brand protection is one of the most crucial, debated and controversial issues. 

Regardless of whether you are a seasoned and structured entrepreneur or the founder of a new startups, your brand is a priority that truly deserves attention. 

There is nothing better, therefore, than to be sure to sleep soundly knowing that you have taken an important step for your business, that is, to safeguard the fruit of our efforts: the investments, ideas, design, and precious time dedicated to building about the image and brand of our business. 

In the following lines, I will tell you about our experience on why we chose to use the services of the EUIPO.

What is the EUIPO and why register your trade mark

Let's start by saying that EUIPO is the European Union Intellectual Property Office, and specifically it is the agency in charge of trademark and industrial design management for the EU internal market. If we think about the startup world, it is possible to think that at the beginning of one's business idea when there are many aspects to take into account such as the product, customers, economic flows, investments, the trade mark may take a back seat, but this is not always the case.

Although these are fundamental issues for the survival of one's business, there comes that moment when a thought arises and confronts you with a question: should I protect myself by registering my trademark, the image of my company? And that is exactly what happened in the case that is the subject of this article. The internationalisation of a client to the European market in the first place raised awareness and stimulated attention to this topic.

Of course, the desire to invest in this asset is more likely to happen when business is good and the economic trend is growing with good prospects, where it is also possible to lead to investing makes more sense. Basically when things start to turn in the right direction you want to make sure that no one can associate with your product/service and take advantage of it.

We believe this is a step and a natural evolution in the process for any business regardless of size and turnover. 

In the case handled here, the fear of being plagiarised was also an emotional factor, an act of love towards one's business and towards the efforts made, an action that denotes a certain maturity and awareness towards what one is achieving.

But there are many important and concrete significant factors that bring a competitive advantage in registering one's trade mark. Let's discover the main ones together.

Advantages of registering a trade mark with EUIPO

Trademark registration as we have seen is not just a technical action, but a defence of the company's vision and strategies. The geographical aspect is certainly an important strategic factor with a fundamental role, as it delineates the area of one's field of action and protection. Let's take a brief look at the main advantages to be gained by filing your own trade mark.

1. Legal protection of the trade mark and prevention of disputes

Trade mark registration gives legal protection and prevents third parties from using or copying your trade mark, as you have the right to use it in connection with the goods and services specified in the registration. Furthermore, registering it establishes your ownership rights and discourages the risk of possible litigation by third parties, who are prevented from exploiting your image and reputation in their favour.

2. The brand for building corporate identity and as a marketing tool

The trade mark is the face of your company and its registration helps build and consolidate your corporate identity in the market, also becoming a very powerful marketing tool. 

The legal protection associated with branding can be used in communication strategies to increase consumer confidence, fuelling trust and the perceived value of your brand and therefore of the business in the eyes of customers.

The decision to tackle this path with the EUIPO was dictated by the fact that the reference portal is really a valuable resource full of information and insights, which help one to orientate oneself among the various choices that arise in the steps of the registration process, especially in the initial stages. The platform has a valuable FAQ section where all possible perplexities can be resolved, and we were also able to verify the effectiveness of the customer service, where we were contacted the next day when we requested additional information by email.

The SME Fund

The SME Fund called 'Ideas Powered for business' is a grant programme designed to help small and medium-sized enterprises in the European Union with the protection of their intellectual property rights. Implemented by EUIPO, the SME Fund was active in 2023 from 23 January to 8 December 2023 and was a change from the year before. Previously, the funding was spread over several phases over the year, which only had to be joined within the specified timeframe. At the time of writing this post, the EUIPO is preparing the SME Fund for 2024.

Useful information to know before applying 

Before you get to the actual filing there are some important steps to take. The portal sheds light on any doubts about the basic definition of what constitutes a trade mark, design or model with practical examples, sharing what are the requirements for approval and what could be the grounds for possible refusal. Among the examples given, one of the most common possible grounds for refusal may be the lack of distinctiveness of the trade mark.

Within the site there is the possibility of consulting a vast database of all other trade marks in which, both by name and by image, one can (perhaps better to say must) verify any similarities of our trade mark with others, thus avoiding plagiarism and oppositions to our registration being examined.

Browsing through the various sections of the site, which, we remind you, can also be used in Italian, it is possible to find out how the fees and payments work. Let's see below what documentation is required to start with the application.

Documentation required to register a trade mark

Among the first things to know is that you must have a company bank account. It is good to reiterate this from the outset because if you are not an established business or have simply never been asked for one before or have never needed one, it is compulsory to have one here, so it is a good idea to contact your bank manager and ask about feasibility, timing and costs.

After this obligatory step, the other documents are those relating to your startup or SME, from the certificate of VAT registration and the related denomination, the number of the VAT and tax code and, of course, your trade mark to be filed. For more information on what you need to know before submitting your application, please visit this link.

The Voucher: how to apply for it, how much it is worth and when to apply for it

Having understood the first necessary steps and documentation in hand to start the registration process, there is still one more fundamental step to take and that is to apply for the voucher which can be done from a banner like this one below.

The funds are not infinite and one has to follow the timing and ways well in order not to be excluded. At the time of writing (January 2024) the funds for the current year are being reformulated, so in order to avoid being paid in full it is a good idea to follow the progress and new availability.                                            

The voucher, once the application for eligibility has been submitted and the disbursement acknowledged, is worth a maximum of 1,000€ on which a discount of up to 75% can be applied on the eligible preliminary expenses. Finally, its duration is 2 months, extendable for another 2 months once, after which the voucher expires. 

The voucher is activated by requesting refund of the cost only after the fee for the service has been paid and at the end of the process, the SME Fund itself will notify the company's bank account of the refund. 

Since the voucher has a value of 1000€, if the cost does not exceed this amount, the remaining credit remains available for other EUIPO services. We can now move on to the registration process.

The Trade Mark Registration Process on EUIPO

The process of registration and filing is the formal act concerning the trade mark and reflects the strategy and criteria set and decided for your business. 

On the first pages we find a wide range of choices of specific services and associated costs between fast track circuits, various types of MUE deposits or other options. With careful reading and with the help of all the information available on the site, opting for the choice that best suits your specific needs will be easier.

As we are working with directives and regulations on a European basis not all participating countries implement and cover the same services. For example, the 'Pre-Diagnosis Service' (all info is available at this address) is suggested where you can get specific advice on defining your IP strategy. Unfortunately, however, this service is not available for Italy but in only 11 other countries including Germany, Portugal and Sweden.

A first distinction in the compilation phase is the option to choose between Easy Filling and MUE filing. As far as Easy Filling is concerned, this is mainly valid if you are a natural person within the EU economic space and if you do not have a legal representative (in addition to another set of needs and characteristics expressed here). If, on the other hand, you are an IP expert, then you can use another parallel MUE filing route, being connected to the application process. 

To dispel any doubts here as well, we share the link where are detailed the two differences between Easy Filling and MUE filing.

Having made these distinctions, the rest of the work is practically done. Following the guided path step by step and having loaded the brand that reflects the specifications, it is necessary to set the class (or classes) associated with and close to your business to which you wish to extend the influence of your brand. 

But what are classes? Classes are nothing more than the specific professional categories divided and detailed according to particularities of one's profession. Here, too, the guided path helps.

Fees and technical time in trade mark registration

As far as costs are concerned, for the trade mark the basic fee is EUR 850 and protection lasts for ten years. The second additional class costs 50€ and the third class 150€: details on costs here. 

The term of a registered trade mark in the European Union (MUE) is valid for a period of 10 years from the filing date of the application and can be renewed indefinitely, each time, for a period of 10 years and each time you can decide whether to change by scaling up even on a national basis.

Well, now that the application to file your trade mark is complete, all that remains is to wait for the next steps: exactly 3 months must elapse from the moment our application is published, during which time oppositions can be raised against the filing!

Oppositions and duration of trade mark registration

The moment it is filed, the trade mark is published in the bulletin of registrable applications, and as we have anticipated, anyone who is entitled to it or believes that our trade mark conflicts with theirs may file an application opposing the filing through a specific procedure (here's what you need to know). Also in this case, the information is numerous and easily available on the EUIPO site, all you need to do is make sure that the directive is up-to-date and in progress at the time of the check.

After the three months have passed without opposition, it takes another two weeks or so to arrive at the scheduled date of publication, during which time the classifications are checked, any impediments analysed and all formalities completed. Once this last short period has passed, our trade mark is officially registered and published in the European Union trade marks bulletin and a copy of the Registration Certificate (always available and downloadable from the EUIPO website) is delivered directly to us by email.  

From the date of registration and publication, the 10-year validity period starts, renewable just a few months before its actual expiry. 

Conclusions

We have come to the end of this excursus starting from the strategic idea of the registration of one's own trade mark seen as an opportunity for one's own business, as a growth and value factor. . We went from the introductory phases to the definition of the requirements needed to start this path, indicating and describing the fundamental steps to complete all the necessary steps. Last but not least, we also saw the importance of verifying and applying for access to funds in advance, so that the costs of management fees can be significantly reduced.

We believe that protecting one's intellectual work is an important factor for one's business, especially as it restores a certain confidence and security in presenting and promoting one's image in all possible scenarios. The EUIPO portal in this case proved to be a valuable ally in bringing our work to fruition.