Under EU legislation, the owner of a prior company or trade name can oppose the registration of an EUTM (or once registered, apply to invalidate it) in certain circumstances. The protection afforded to such names can sometimes come as a surprise to those in the UK who are used to focusing on the law of passing off when it comes to unregistered rights. 

Here, we summarise the key issues brand owners need to consider about prior company and trade names when clearing new brands in the EU. Brand owners who have company and trade names in the EU not registered as trade marks may also be able to rely on the provision to oppose/invalidate conflicting later EUTMs.

What is the law?

Under Article 8(4) of the EUTM Regulation, a proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance can oppose the registration of an EUTM where (under EU law or the law of the member state concerned):

• rights to that mark/sign were acquired prior to the priority/filing date of the EUTM

• that mark/sign confers on its owner the right to prohibit the use of a subsequent trade mark.

There is an equivalent provision allowing invalidity in the same circumstances (Article 60(1)(c) in conjunction with Article 8(4)). These are wide provisions that potentially catch a variety of prior unregistered marks and signs, including prior company and trade names. 

What conditions must be met?

To fall within the provisions, three criteria must be met:

• There must be an unregistered trade mark or sign used in the course of trade of more than mere local significance (a question of EU law).

• Rights to that mark or sign must have been acquired (under EU or local law) prior to the priority/filing date of the EUTM.

• That mark or sign must confer (under EU or local law) on its owner the right to prohibit the use of a subsequent trade mark.

We consider these criteria below, but first note the importance of local laws. 

Relevance of local laws

Whether a party can rely on Article 8(4) depends not just on there being use of a prior company or trade name on more than a local level in the EU, but also on the law of the member state concerned (and whether a right exists under that law and confers on the owner power to prohibit the use of a later trade mark). 

Some knowledge of which EU member states protect company and trade names and under what circumstances is therefore required when considering Article 8(4). A review of the law in each EU member state is beyond the scope of this article, but nearly all member States confer such protection to some degree, including Austria, the Czech Republic, Denmark, France, Germany, Greece, Italy, Spain and Slovenia. The threshold for protection varies, being arguably relatively high in countries such as France and low in countries such as Denmark. 

An unregistered trade mark or sign

Article 8(4) requires the existence of an "unregistered trade mark or sign", which can include company and trade names. Company names and trade names are not interchangeable rights under Article 8(4). They are different and those wishing to rely on Article 8(4) must specify whether they are relying on an earlier company name or trade name. 

Company names

The EUIPO Guidelines define a company name as "the official designation of an undertaking, in most cases registered in the respective national commercial register." As such, while most company names are registered, some might not be. 

If, under the national law of the applicable member state, the registration of a company name is a prerequisite for protection, then evidence of that registration needs to be shown. If registration is not a prerequisite for protection, then the company name can still be relied upon under Article 8(4). In some countries, the area of activity given against a company name registration can be relevant for the success of any attack based on Article 8(4). 

Company names are generally registered in particular countries or regions of the EU. However, company names can also be protected under EU law such as the ‘societas Europaea’ (‘European society’ or ‘European company’), commonly abbreviated as ‘SE’. This is a public company registered under EU corporate law. While an SE exists at the level of the EU, it must be registered in the EU member state where it has its registered office. Company names protected under EU law can be relied upon under Article 8(4), but the opposition or invalidation form needs to make this clear. 

Trade names

A trade name is defined by the EUIPO Guidelines as a name used to identify a business, as distinguished from a trade mark that identifies goods or services as produced or marketed by a particular undertaking.

A trade name is not necessarily the same as a corporate name or commercial name entered in a commercial or similar register. Trade names can cover other non-registered names such as one that identifies and distinguishes a certain establishment. 

Trade names are protected in all EU member states and generally do not need to be registered. If the national law of a member state requires the registration of a trade name to enforce the rights in that trade name, this requirement will only be applied where the opponent's/invalidity applicant's nationality is the same as the member state in question.

Use in the course of trade of more than mere local significance 

Whether a company or trade name has been used in the course of trade and is of more than mere local significance is a question of EU law. The provision is designed to ensure that only rights with a real and actual presence on their market are protected. 

Use "in the course of trade" has been interpreted to mean use in the context of commercial activity, with a view to economic advantage and not as a private matter. Use "of more than mere local significance" means use in a substantial part of the relevant territory where the right has protection. This could be established by, for example, producing invoices from outside the region of the principal place of business, demonstrating a network of economically active branches or producing press cutting showing the degree of recognition of the name. 

Use in the course of trade and of more than mere local significance must be established before the priority/filing date of the EUTM under attack. Moreover, case law says that, in order to rely on Article 8(4), the applicant must provide evidence of the ‘continued existence’ of the prior company or trade name relied upon. This normally presupposes that the name in question is still in use at the time of the filing of the opposition/invalidity action. However, there might be circumstances where use has stopped or substantially reduced where the right might still be deemed to exist. 

Importantly, the use must be of a particular nature. The company or trade name must be used in such a way that a link is established between the sign that constitutes the company or trade name and the goods marketed or the services provided under that sign. This ensures that a bare company or trade name not associated with particular goods/services, does not receive protection. 

Rights acquired prior to the priority/filing date of the EUTM

Local law will determine whether rights in the company or trade name have been acquired prior to the priority/filing date of the EUTM in question. 

Right to prohibit use of a subsequent trade mark

Again, this will be a question of local law and will vary from member state to member state. For example, in the recent Peach Booty case the relevant Slovenian law amounted to the test for a likelihood of confusion.

Evidence of local laws must be adduced to support an Article 8(4) opposition/invalidation action or the action will fail.

What this means for you

The risks posed by the use of prior company and trade names should be borne in mind when clearing new brands for use and registration in the EU. There have been numerous examples of the owners of prior company and trade names successfully opposing EUTM applications in the last year, which might suggest brand owners are not fully alive to these risks. A good knowledge of local laws is required to come to a view on the level of risk posed. 

The flip side is that brand owners who have company and trade names in the EU (not registered as trade marks) might be able to rely on the provision to oppose/invalidate conflicting later EUTMs.

You may also be interested in our article on the IP issues engendered by deepfakes here.

We also round up other developments this month here.