IMPORTANT LESSONS IN TRADEMARK PROTECTION IN THE EUROPEAN UNION (EU)

1. Common Risks in Trademark Protection in the EU

Many businesses expand their trademark protection to the EU via the Madrid system but fail to closely monitor their applications or lack a local legal representative. As a result, notifications from the EUIPO are not received or handled on time, leading to loss of rights due to untimely responses in situations such as oppositions or requests for proof of use. In many cases, the owner only learns about the loss of rights when it is too late to intervene. Unfortunately, businesses not only lose their trademark rights but also incur additional fines and legal fees arising from the case. Even without participating in litigation, businesses are charged fees as per regulations, causing double losses: losing the trademark and extra costs — all because of lacking a reliable legal representative in Europe.

2. Appointing a Legal Representative in the EU

It is essential to have a designated legal representative in the EU. The representative will receive notifications directly from the intellectual property office and respond promptly, avoiding the risk of losing rights due to missed information or delayed responses.

3. Proactively Monitoring the Trademark Application Process

Do not just file an international application and “wait for results.” Businesses should regularly check the status of their applications on the EUIPO and WIPO systems to promptly catch any updates and actively coordinate responses if issues arise.

4. Preparing Response Plans for Potential Disputes

From the moment of filing, businesses should anticipate possible oppositions or requests to prove use. Early preparation of evidence and response plans helps save time, reduce costs, and increase the chances of maintaining protection if disputes occur.

5. Understanding the EU’s Specific Trademark Regulations

EU regulations are particularly strict regarding the likelihood of confusion. Businesses need to thoroughly study the protection criteria to evaluate their registration chances and avoid refusals or oppositions on grounds of similarity causing confusion.

6. Budgeting for Costs and Risks

Initial registration fees are only a small part of the total costs. Businesses need to consider additional expenses such as opposition fees, attorney fees, or submitting proof of use — especially since the EU market often involves disputes.

7. Close Coordination Between Representatives in Vietnam and the EU

Having a representative in the EU alone is not enough. Businesses should connect with their representatives in Vietnam to monitor the overall progress, provide timely instructions, and receive advice in the context of Vietnamese law – which is especially useful when considering expansion or adjusting registration strategies.

8. Keeping Up with Legal Trends and Landmark Cases

Do not overlook trademark dispute cases in the EU. Staying updated on EUIPO decisions helps businesses clearly understand legal boundaries and gain additional grounds to adjust their filing or response strategies accordingly.

Why Cooperate with Professional Representatives in Vietnam and the EU?

Protecting trademarks in the EU is not just a procedural step but requires thorough preparation in legal matters, strategy, and timely reactions. A representative in the EU handles requests directly from the intellectual property office, while a representative in Vietnam acts as an effective bridge for consulting, planning, and coordinating long-term strategies. This collaboration helps businesses not only safeguard their rights but also optimize time and costs throughout the process.

We accompany you at every step in protecting your international brand:

• Advising on the selection of suitable classes and scope of registration to minimize risks of refusal or opposition.
• Closely monitoring application status at the EU and promptly reporting any changes or new requirements.
• Supporting dispute resolution, complaints, or oppositions, professionally and effectively protecting your brand rights in the international market.

📧 Email: ip@anlis.vn

📞 Phone: +84 899 88 6060 – Zalo/Viber/Whatsapp: +84-366 469 436

🌐 Website: https://anlis.vn/

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