Is a regular trademark application enough? (EU trademark)

商標エージェント

Hello,
My name is Krasimira Kadieva – an European trademark attorney and it is my pleasure to answer your question.

You can definitely register your European trademark for software by including three classes in your application and it will be enough. Most of the services for software are included in class 42. However, you can also find software in some other classes. You can file an application until March 22, 2016 for three classes for 900 Euro (if you file the application online). It is important to be informed, that the new Regulation 2015/2424 will enter into force on March 23, 2016 and then the official fee for three classes will be 1050 Euro. In this case if you would like to file your trademark for goods and services in three classes, then you are recommended to file the application before March 23, 2016.

The procedure for filing of the application is not difficult. However, I strongly advise you to perform a preliminary trademark search in order to avoid opposition proceedings. A professional trademark attorney before OHIM can perform this search for you and advise you how to further proceed in case there are identical or similar trademarks. You should be sure that you do not infringe earlier rights in order to avoid opposition proceedings.

In what way do the classes, which you register matter to your business? You can object the use and registration of an identical or similar trademark for identical and/ or similar goods and services for which your trademark has been registered.

I am wishing you a successful registration of your trademark.

With best regards,
Krasimira Kadieva

商標弁護士

Hi,
My name is Riccardo Ciullo, I am European Trademark attorney based in Barcelona . Until 23 March 2016, with the same official fee (900 EUR), you will be able to cover up to three classes. Apart services related to software, it is important to cover the product as such, most of all if you want to lunch an app, this will be done including class 9. In any case, I strongly advise to carefully review the specific products and services to protect, in order to avoid Office's refusal and the risk of incurring in additional costs: The OHIM has became quite strict when it comes to product examination after the "IP Translator" EUCourt of Justice Decision. It is also very important to select a sufficiently distinctive trademark. Finally, is highly recommended to conduct a preliminary search in order to avoid oppositions and/or infringement actions against the actual use of the mark. Good Luck!

Riccardo Ciullo
www.ipwisely.com

弁理士

Hi,
In addition to my colleagues' advice,, please note that you have to prepare a list of goods and services covering your present as well as potential future activities. The application can't be extended after filing! The classes merely serve to group the list of goods and services.
While the online filing itself is straightforward, it is the detailed knowledge of the legal requirements and professional experience that add value to a successful trademark.
Thus, in order to avoid disappointment, please consider to obtain assistance and/or representation for registering your trademark.
Best regards

IPコンサルタント

Hello!
We are an international IP firm with offices in the USA, Spain and Chile. All of the information below is agreeable, but I wanted to add two things:
1. You can send me the list of goods and services that you will be commercializing with your trademark and I can prepare for you a class list for free.
2. We recommend you hire a trademark watch service in all of the European Union (both the EU office and the individual countries). In order to know if there are third parties trying to register a conflictingly similar mark in any of these offices.

If you have any additional questions I will be happy to answer them for you.