Registering a trademark brings many benefits. However, there is one major misunderstanding that most trademark owners have. It is that if you have registered an EU trademark, you have the automatic right to use the mark. This is a logical assumption, but unfortunately incorrect.
To put this simply, it is possible that you obtain an EU trademark registration but cannot actually use the registered mark because using it would infringe other companies’ prior trademarks and expose you to various legal consequences, including paying damages for the other company whose rights you infringe and having to rebrand.
How on earth is this possible?
Trademarks, like other intellectual property rights, are about exclusion. Article 12 of the EU trademark regulation is called “Rights conferred by an EU trade mark” and according to that, registration gives the owner “exclusive rights in the mark”. The article then specifies that the exclusivity means that the owner has the right to prevent others from using similar trademarks if there is a likelihood of confusion. Nowhere in the regulation (or in most national trademark laws, although there are some exceptions) it is said that the right to a trademark means also the right to use it. It is merely the right to prevent others from using infringing trademarks.
It is possible that another company has registered a similar trademark before you, and that company has a right to prevent the use of your trademark if there is likelihood of confusion. That company with a prior trademark has exclusive rights to it, meaning that they can prevent others from using a trademark that is similar to theirs. Your later trademark registration does not make somebody else’s rights that existed before your trademark registration redundant. Your later EU trademark will not provide a defence against trademark infringement.
Also, it is important to remember that the EU trademark office does not even examine prior registrations, so it is possible to register a trademark that is similar or even identical to prior registered trademarks. The owners of prior trademarks do not lose the right to prevent the use of the later trademark even if that later trademark is registered.
It is also important to realise that there might be other types of prior rights, apart from earlier trademarks, that could prevent the use of later registered trademarks. For example, a trademark (whether registered or not) could infringe copyright or protected design, company name, geographical indication or other such rights.
Is there no link between registration and use?
First, it is possible to use a trademark (product name) without having a registration. Registering it gives legal protection, but it is not mandatory. In fact, the majoritys of European SMEs have not registered their trademark, despite studies showing that small companies benefit from intellectual property registrations even more than large corporations. Registering the trademark is a sensible and highly recommendable thing to do, but it is certainly not mandatory.
This brings us to the connection between registration and how it can facilitate the use of that trademark. The registration ensures that once your trademark is registered, nobody else can get better rights to a similar name later. With a registration you cannot overcome obstacles and prior rights that existed before you decided to register your mark, but you can make sure that no new ones arise. If you do not register your trademark, it is possible that in the future somebody else registers a similar trademark and you may have to change your brand name. Without registration you are constantly vulnerable. Your trademark use can be challenged not only by owners or earlier trademarks, but also by owners of future trademarks. The latter can be tackled with a registration.
So with a trademark registration you cannot swipe the slate clean of prior problems, but you can limit your exposure so that new ones won’t arise. This is how trademark registration also helps you secure the chance to use your trademark.