Top 7 Mistakes Non-EU Lawyers Make When Filing EU Trademarks (and One Bonus Tipp) #rolfclaessen
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🔴 Description: What are top 7 mistakes non-EU-lawyers make when filing EU trademarks – and one bonus tipp!
1st Mistake: Prior Rights and Availability: This seems to be obvious but is it overlooked more often than you think. The client has first filed their trademark in their home country, e.g. the US and did a search for earlier similar trademarks before filing. Then the client decides to also file abroad e.g. in the EU. Sometimes these trademarks are then filed without an additional search for earlier similar trademarks in the EU. This is probably the most costly mistake, because then then client can be held liable for trademark infringement in the EU.
2nd Mistake: Too Narrow Goods and Services: trademarks do not have be new when filed. If you do not have to rely on the priority of the earlier trademark in the home country, you can often claim much broader goods and services in the EU! Example: your client is from the US and filed a trademark for “software for heart rate monitoring”. In the EU you could get protection for the much broader term “software” as such! This is not possible in the US and some other countries such as China.
3rd Mistake: What are the implications of filing a trademark under the Madrid Protocol as opposed to directly with the European Union Intellectual Property Office (EUIPO)? When filing via the Madrid Protocol, you have to use the goods and services of the basic trademark application (or a more narrow version of the goods and services). You you do not have freedom to claim “software” in the EU instead of the original “software for heart rate monitoring”.
4th Mistake: Blocking Co-Existence Agreements: sometimes earlier co-existence agreements are overlooked that block the client from entering the EU with this particular trademark for these goods and services.
5th Mistake: Use in the EU: EU trademarks can be cancelled if they are not used in a significant portion of the EU within 5 years from registration.
6th Mistake: Exhaustion of Rights: Exhaustion of rights is a little different in the EU! Rights derived from an EU trademark are only exhausted, if the goods marked with the trademark have been put on the market in a particular Member State, by or with the consent of the legitimate trademark owner (with very few exceptions). That means for trademark owners, that they can enforce their EU trademarks also against sellers of goods, where the goods are original goods but have not been first put on the market by the trademark owner or with the consent.
7th Mistake: Inadequate representation: from all this you might have learned that it might not be wise to entrust filing EU trademark into the hands of inexperienced service providers.
Now the bonus tipp that is not directly linked to filing EU trademarks: Too Narrow Enforcement: Some (few) civil courts in the EU have the power to issue decisions that can be enforced EU-wide. Choose these courts to stop infringers EU-wide with a single decision of a court.

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Dr. Rolf Claessen
Michalski · Hüttermann & Partner Patentanwälte mbB
Kaistr. 16A
D-40221 Düsseldorf
📞 +49 211 159 249 0
📠 +49 211 159 249 20

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🔴 About Rolf Claessen
Rolf Claessen is a patent attorney at the law firm Michalski – Hüttermann & Partner in Düsseldorf.
🔴 Legalese and Disclaimer – Legal
You have watched a video of patent attorney Rolf Claessen. The opinions expressed by the participants in this video are their own opinions and do not reflect the opinions of the respective law firms, nor are they endorsed by the law firms. None of the content should be considered legal advice. Under no circumstances should these videos be construed as legal advice or legal opinions. The content of these videos is intended as general information. For specific legal questions, you should contact your patent attorney. Consult your patent attorney.
🔴 Keywords: Rolf Claessen, patent attorney, Michalski – Hüttermann & Partner, patents, trademarks, designs, #rolfclaessen #patents #trademarks #designs

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