What You Need to Know Before Filing Your Trademark Application with OSIM or EUIPO?

Both the State Office for Inventions and Trademarks (OSIM/ROPTO), based in Romania, and the European Union Intellectual Property Office (EUIPO), headquartered in Spain, offer legal mechanisms to protect your brand. However, the registration process involves multiple stages and decisions that require careful understanding to avoid costly mistakes.

1. What is a Trademark, and Why is Registration Important?

A trademark is a distinctive sign that can take various forms, including a name, logo, slogan, or even a sound. It allows consumers to recognize and differentiate your products or services from those of other companies. Registering your trademark grants you exclusive rights to its commercial use and protects you against imitation or unauthorized use by competitors.

Without formal registration with an intellectual property office, it is challenging to assert exclusive rights over your mark. Competitors may exploit or even register an identical or similar mark ahead of you, potentially damaging your brand’s identity.

2. Choosing Between OSIM and EUIPO

OSIM (State Office for Inventions and Trademarks) provides protection exclusively within Romania, making it ideal if your business operates solely at the national level or if you have a limited budget.

EUIPO (European Union Intellectual Property Office) offers protection across all EU member states. If you plan to expand your business throughout Europe, registering your mark with EUIPO is the better option. It provides broader protection and eliminates the need for separate registrations in each EU country.

3. Checking Trademark Availability

Before initiating the registration process, it is crucial to ensure that the trademark you intend to register is available and not already in use by another party. Both OSIM and EUIPO provide public databases where you can conduct a preliminary search.

At OSIM, you can verify the database of registered trademarks. Meanwhile, at EUIPO, the TMView tool allows you to search for registered marks not only in the European Union but also in other jurisdictions.

4. Classification of Goods and Services

Another critical step is selecting the appropriate classes of goods and services for which you wish to protect your trademark. The international system known as the Nice Classification divides goods and services into 45 distinct classes. It is essential to identify all relevant classes for your business, as trademark protection will be limited to the classes selected in the registration application.

For instance, if you register a mark for selling clothing (Class 25), it will not automatically cover electronics (Class 9) unless you include them in the application.

5. Associated Costs

Costs vary depending on the registration office and the number of classes you select. At OSIM, the fees are generally more affordable than at EUIPO, but OSIM only offers protection in Romania. EUIPO fees are higher but provide coverage across all EU member states.

For registration with OSIM, costs may start from a few hundred lei for a single class, while at EUIPO, fees start at approximately €850 for one class. If you apply for multiple classes, fees will increase accordingly. Additionally, any modifications or opposition during the registration process can result in extra costs.

6. Duration and Validity of Protection

Once the application is submitted, the registration process may take between 6 to 12 months at OSIM, while at EUIPO, the average timeframe is around 4-6 months. During this period, your application will undergo formal and substantive examination, and third parties may file oppositions against your registration.

Upon approval, your trademark will be protected for a period of 10 years, with the possibility of renewal in successive 10-year terms.

7. Oppositions and Conflicts

After the publication of your trademark application, there is a period during which third parties can file oppositions if they believe your mark conflicts with an existing one. This is more common with EUIPO, as it covers a larger territory, increasing the likelihood of conflicts. In the event of an opposition, you will need to defend your mark, which may involve additional costs and time.

8. Consulting a Registered Intellectual Property Counsel

While the registration process can be handled independently, working with a registered intellectual property counsel can simplify the process and help prevent potential errors. They can assist with preliminary research, drafting your application correctly, and handling any conflicts or oppositions that may arise.