Common IP mistakes with EU trademarks
Securing a trademark in the European Union is crucial for protecting a business's identity. However, the trademark registration process may not be risk-free. Many applicants make critical mistakes that can result in avoidable costs, litigation or even loss of rights.
In this article, we highlight the most common intellectual property (IP) mistakes made with EU trademarks and provide guidance on how to avoid them.
1. Failing to conduct a comprehensive trademark search
One of the most common mistakes is filing a trademark application without an in-depth trademark search. It is important to note that just because a name or logo is not yet registered does not necessarily mean it is free to use.
A failure to conduct thorough research can result in:
Oppositions from existing rights holders – A third party can challenge the application if they have prior rights. Also worth knowing is that national trademark owners in any of the 27 EU countries can oppose a trademark application.
Legal disputes and rebranding costs – A company may be forced to change its branding after years of market presence.
Application rejection – The EUIPO (European Union Intellectual Property Office) may refuse registration if there is an opposition, as described in point 5.
Recommendation: Before filing your application, carry out an EU-wide search of the EUIPO database and, if necessary, a broader search for unregistered trademarks and domain names. An experienced trade mark lawyer can help you interpret the results and assess the risks.
2. Selecting the incorrect goods and services classes
Trade marks are registered under specific classes of goods and services according to the Nice Classification System. However, the selection of the wrong categories can limit or even cancel protection.
In our experience, the most common pitfalls are:
Overly broad classifications - Selecting too many irrelevant classes can lead to challenges or unnecessary fees.
Overly narrow protection - If the mark does not cover all relevant categories, competitors may register similar marks in related fields.
Fast Track processing deficiencies - It does not meet the requirements for Fast Track processing.
Recommendation: It is appropriate to carefully define the core business activities, while ensuring that all relevant goods and services are included. Consultation with an intellectual property expert can of course help to determine the appropriate scope of protection.
3. Assuming an EU trademark covers all global markets
An EU trade mark provides protection in all 27 member states, but excludes protection outside the EU. Companies operating internationally should consider additional registrations.
Risks of ignoring global coverage:
Inability to prevent brand misuse outside the EU – A competitor in the UK (no longer a member of the EU), Switzerland, the US, or China could legally use the same brand name.
Legal barriers to expansion – If a business decides to enter a new market, they may find their brand name is already in use or protected.
Recommendation: For global coverage, it is worth using the so-called Madrid system, which allows simultaneous registration in several countries. However, strategic planning with an IP lawyer is highly recommended.
4. Failing to use the trademark actively
Unlike some jurisdictions where registration alone is enough, EU trademarks must be actively used within five years of registration. Otherwise, they become vulnerable to cancellation due to non-use.
Consequences of non-use:
Loss of protection – A competitor can file for revocation if a mark is not in genuine use.
Inability to enforce rights – Without proof of active use, infringement claims may be dismissed.
Recommendation: Ensure regular and documented commercial use of the trademark in marketing materials, product packaging, websites, and advertising. Keep records that demonstrate genuine use.
5. Poorly drafted applications leading to rejection
A trademark must be distinctive and not merely descriptive. If an application is too vague, generic, or misleading, the EUIPO is likely to reject it.
Common mistakes:
Using descriptive or generic terms – A name like “Best Coffee” for a coffee brand is unlikely to be accepted.
Failing to meet distinctiveness requirements – The mark must distinguish the applicant’s goods or services from others in the marketplace.
Recommendation: Before filing, conduct a legal assessment of the mark’s distinctiveness. Modifying a generic term with a unique brand element can improve registration chances.
Conclusion
An EU trademark can have a special value, but only if it is managed correctly. The mistakes outlined above can result in wasted time, wasted investment and legal battles. So there is no question that it is highly recommended to avoid them for your business to:
✔ strengthen your brand's legal position.
✔ reduce the risk of oppositions and cancellations.
✔ ensure protection in the relevant markets.