Many entrepreneurs use names or logos in their businesses that have never been registered as trademarks. This can result in having to abandon a given designation if another entity has registered the same or a similar trademark. Another issue is that we often won't be able to block the registration of a similar designation by another entity, even though we would be able to do so if we held a registered right.
EU law does not provide for the protection of unregistered trademarks or other similar signs. If such a sign is used, protection can be sought in individual Member States, where separate regulations may provide such protection. The issue of unregistered trademarks or similar signs under European Union law becomes significant in opposition proceedings before the European Union Intellectual Property Office (EUIPO).
If one entity applies for registration of a trademark at EU level, another may request that the application be rejected on the basis of its unregistered trademark or another sign. This is based on Article 8(4) of REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017 on the European Union trademark, according to which:
"4. In the event of opposition by the proprietor of an unregistered trademark or of another sign used in the course of trade of more than mere local significance, the trademark applied for shall not be registered if and to the extent that, under Union or Member State law governing such a mark:
(a) the rights to that mark were acquired before the date of application for registration of the EU trademark or the date of priority claimed for the application for registration of the EU trademark;
(b) that sign confers on its proprietor the right to prohibit the use of a later trademark."
It's worth noting that a given sign must have significance beyond local significance. This regulation aims to limit the potential for excessive opposition proceedings. The opposite of "local significance" is certainly a situation where a trademark is widely used throughout the entire country, or at least a significant portion of it. Another important issue is that the trademark must be granted protection in a given member state. Therefore, we cannot speak of protection for a sign used by a given entrepreneur if we cannot identify the relevant legal provisions in that country that would provide protection on any basis.
As for further requirements, the right must be acquired before the date of the trademark application filed with the EUIPO, and the owner must have the right to prohibit the use of the later mark. The latter point is particularly important, because even if a given mark enjoys some form of protection, but the regulations do not explicitly provide for the possibility of prohibiting the use of the later mark, filing an effective opposition will be impossible.
The concept of "unregistered trademarks" poses no major problems. It's worth emphasizing, however, that in each case, the scope of protection granted by the law of the given member state will be crucial. This is important, for example, when defining the scope of protection. One country may require a given mark to have very high recognition, while another requires at least a minimal level of recognition.
In summary, the use of a given sign, which is not a registered trademark, may have positive benefits for its holder, in the form of the possibility of blocking registration at the EU level, provided that the legislation of the given country grants appropriate protection to this sign.
This alert is for informational purposes only and does not constitute legal advice.
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