Short answer
An EU trade-mark application can be opposed, and a registration later invalidated, where an earlier right satisfies one of the relative grounds in Regulation (EU) 2017/1001.
An earlier registered mark blocks an identical sign for identical goods or services. For similar signs or goods, the question is whether the relevant public is likely to believe that the goods or services come from the same or economically linked undertakings. The assessment is global: visual, aural and conceptual similarity interact with the similarity of the goods, the earlier mark's distinctiveness and the public's attention.
A company name, trading name, unregistered mark or domain can qualify only if it was acquired before the application, is used in trade with more than merely local significance, and the governing EU or Member State law lets its proprietor prohibit the later mark. Registration of a company or domain alone is not enough.
A protected designation of origin or geographical indication can block a later mark where the applicable GI law authorises the opponent and prohibits the proposed registration or use. A reputed earlier mark has broader protection even for dissimilar goods where consumers establish a link and the later use, without due cause, would take unfair advantage of or damage its distinctive character or reputation.
Start with the right, date and territory
Relative-ground analysis begins before comparing logos. Identify:
- the filing or priority date of the EU application;
- each earlier right and when it was acquired;
- the territory in which that right is protected;
- the goods and services covered or actually used;
- the relevant public and its level of attention; and
- the legal ground invoked under Article 8 of the EU Trade Mark Regulation (EUTMR).
Earlier registered rights include EU, national and Benelux marks and international registrations effective in those territories. A pending earlier application can support an opposition if it later registers. Priority usually determines which registered application is earlier.
Identical marks for identical goods
Article 8(1)(a) provides “double identity” protection. The signs must be identical and the goods or services identical. Identity is interpreted strictly, although insignificant differences that an average consumer would not notice may not prevent it.
If either comparison falls short of identity, the case ordinarily moves to likelihood of confusion under Article 8(1)(b). That ground does not require proof that consumers have already purchased the wrong product.
Likelihood of confusion is a global assessment
The decision-maker compares each mark as a whole while giving appropriate weight to distinctive and dominant elements. It assesses appearance, sound and meaning from the perspective of the average consumer of the goods or services in the relevant territory.
Likelihood of confusion “must be appreciated globally”. —
The factors are interdependent:
- similarity of the signs;
- similarity of the goods or services by nature, purpose, use, competition, complementarity and distribution;
- inherent or acquired distinctiveness of the earlier mark;
- distinctive and dominant components;
- the relevant public's attention; and
- whether imperfect recollection is likely to create a common-origin belief.
In Canon, C-39/97, the Court explained that a lesser degree of similarity between goods may be offset by a greater similarity between marks, and vice versa. A highly distinctive earlier mark receives broader protection. But reputation or distinctiveness cannot compensate for a complete absence of sign similarity.
Conceptual differences can sometimes neutralise visual or phonetic similarity where the public immediately grasps a clear meaning. There is no percentage or syllable-count rule.
Confusion includes a belief that the undertakings are economically linked. Mere association is insufficient if the public does not infer common or connected commercial origin.
Company names and trading names
A company name is not automatically an earlier trade mark. It may support Article 8(4) as an unregistered mark or another sign if four conditions are met:
- the claimed sign is used in the course of trade;
- its significance is more than merely local;
- the right was acquired before the EU trade-mark application or priority date; and
- EU or Member State law governing the sign gives its proprietor a right to prohibit use of a later mark.
The opponent must prove the national rule, acquisition, territorial scope and enforcement conditions. A company-register extract may prove existence and date, but not market use, geographic reach or a prohibition right.
In Céline, C-17/06, the Court distinguished merely using a company name to identify a business from using it in relation to goods or services. Trade-mark infringement requires use capable of affecting the mark's functions. Prominent use of the company name on products, shops, advertising or online offers may cross that line.
Domain names
A domain registration is a technical allocation, not an EU-wide exclusive right in the string. A domain can support Article 8(4) only where its actual use and the governing national law satisfy the same requirements applied to other non-registered signs.
Useful evidence includes dated website captures, traffic, sales, invoices, advertising, customer geography, domain-control records and the national cause of action. Parking or merely registering a domain is normally insufficient.
The domain's significance has both geographic and economic dimensions. In Budějovický Budvar, C-96/09 P, the Court required account to be taken of the territory, duration, intensity and regularity of use. The sign must be used in a substantial part of the protected territory, not merely asserted on paper.
Domain disputes may also proceed under national passing-off, unfair-competition or name law, or the relevant domain dispute policy. Those routes do not automatically determine an EUIPO opposition.
Geographical indications and designations of origin
Article 8(6) EUTMR permits opposition by a person authorised under the relevant law to exercise rights arising from a designation of origin or geographical indication. The opponent must establish the protected GI, entitlement to act and the conditions under the law protecting it.
The regimes include Regulation 2024/1143 for wine, spirits and agricultural products and Regulation 2023/2411 for craft and industrial products. Protection can cover commercial use, misuse, imitation, evocation and misleading indications.
The inquiry is therefore not identical to trade-mark confusion. “Evocation” can exist without consumers confusing two businesses if the later sign directly brings the protected geographical name or product to mind. The goods covered, reputation of the GI, presentation and overall context matter.
An application filed after the relevant GI application or protection date must be refused where the GI rules prohibit it. A later registration can be invalidated. Conversely, a qualifying earlier trade mark may sometimes continue under the coexistence provisions of the GI legislation.
Marks with a reputation
Article 8(5) protects an earlier registered mark with a reputation in the EU, or in the relevant Member State for a national mark, beyond similar goods and services. The proprietor must prove:
- reputation at the filing or priority date;
- identity or similarity between the signs;
- a link made by the relevant public; and
- at least one injury: unfair advantage, detriment to distinctive character, or detriment to repute.
The applicant may defeat the ground by proving due cause.
In Intel, C-252/07, the Court required a global assessment of the link, considering sign similarity, the goods, relevant publics, strength of reputation and distinctiveness, and likelihood of confusion. Dilution—detriment to distinctive character—requires evidence of a change in the average consumer's economic behaviour or a serious likelihood of it. Tarnishment concerns harm to the mark's image. Free-riding concerns the benefit taken from the earlier mark's attraction, reputation or prestige.
Reputation alone is not enough; the public must establish a “link” between the marks. —
Unfair advantage does not require actual damage to the earlier mark, but it does require more than an attractive similarity. Evidence may include the earlier mark's market recognition, the later branding strategy, image transfer, surveys, advertising context and commercial trajectory.
Procedure and evidence can decide the case
An opposition must be filed within three months after publication of the EU application and must identify the earlier rights and grounds. The parties then substantiate entitlement, scope, dates and the relevant factual claims.
If the earlier registered mark has been registered for at least five years at the applicant's relevant filing or priority date, the applicant can request proof of genuine use. Failure to prove use for the goods and services relied upon can narrow or defeat the opposition. Similar proof-of-use rules apply in invalidity proceedings.
Evidence should be dated, territorial and tied to the claimed sign and goods. Trade-mark certificates establish registration; they do not establish reputation. Company and domain records establish ownership; they do not establish qualifying market significance. GI register entries establish protection, but the opponent must still show authority and the applicable conflict rule.
Conclusion
An earlier word or name does not block an EU trade mark merely because it looks similar. The outcome depends on the legal character of the earlier right, its priority and territory, the applicable conflict test and the evidence supporting every condition.
Registered marks use identity, confusion or reputation grounds. Company names and domains require a qualifying earlier right used with more than local significance. GI rules can reach evocation without ordinary trade-mark confusion.
Sources
This article provides general legal information, not advice for a specific matter. Laws, facts and procedural deadlines may change the result. Follow the linked primary sources and obtain local advice before acting.