Legal brand protection is one of the key benefits of registering a TM in Europe and other jurisdictions. If you do not register your mark, other persons (brand squatters) can register and use it for their own profit. And, thereby, seize your rights to designate their products and services or for economic blackmail - unfortunately, this sometimes happens in highly developed states in terms of law. And then the conflict over the trademark is difficult to avoid.
This article describes the features of a TM dispute settlement procedure in the European Union. It should be noted right away that the legal rules regarding the resolution of disputes over EU trademarks are still not sufficiently harmonized across the European Union as a whole and differ significantly country by country.
For your info
Over two decades ago, a new system of TM protection at the European level was established. Subsequently, the EU Directive introduced the term European Union Trade Mark (EUTM), which is legally correct today.
One of the cornerstones of the EUTM system is the principle of its unitary character which is valid in all EU countries without exception. However, some problems with applying this principle in practice are evident. Large territory of the exclusive right to the EUTM, which has been extended in connection with the accession of new member states, is a source of these specific problems.
To date, more than 2 million TMs have already been registered in the Commonwealth under the EUTM procedure.
All actions related to the violation of EUTM are considered by the trademark courts in each of the Member States. They are required to appoint a limited number of national courts and tribunals of first and second instance.
If the case concerns the counterfeiting of TM, then enforcement action can be initiated in accordance with the relevant national legislation. Since the settlement of disputes on European TM is carried out by specialized courts of the EU in individual member states, the format of the proceedings has significant differences in each country.
NOTE: About 25% of all EU designations are met with an opposition, and special rules apply. To defend an opposition, there is a requirement that applicants be represented by counsel domiciled in the EU. This could be an in‐house counsel of a European subsidiary.
TM proceedings in Europe can be initiated by:
- EUTM owner and authorized licensees;
- Exclusive licensee;
- The licensee with the consent of the brand owner.
Those looking to ensure legal brand protection in the EU should take into account that EUTM owners can prevent unauthorized flow of goods into the market of the entire European Economic Area. The owner can also count on the customs authorities to assist in identifying and seizing the counterfeit products.
Goods that are transported through the European Union and violate registered TM rights can also be confiscated, even if they are not sold directly to the EU market. For those planning to register TM in the EU, it is important to know that gray goods are not within the competence of the customs authorities. However, in this case, the EUTM owners can stand up for their rights by filing a civil suit in court demanding to prevent the sale of counterfeit goods in the Commonwealth.
Legal assistance in TM litigation in Europe
Need to file a claim for a European trademark infringement? It is advisable to seek professional legal assistance as these cases are typically quite complex. IQ Decision UK is specialized in the topic of the EU trademark regulation. Experienced solicitors will advise you on UK and EU dispute resolution issues and help you initiate EUTM litigation.
We provide European Trademark services to startups as well as multinationals.
You can sign up for a consultation by filling out a contact form below.