Coexisting Trademarks: the relationship between the European Union trade mark system and national law
The relationship between the European Union trade mark system and national law is characterised by the principle of coexistence.
This means that both the European Union trade mark system and the national laws exist and operate side by side.
The same sign can be protected by the same proprietor as an EUTM and as a national trade mark in one (or all) of the Member States.
The principle of coexistence further implies that the EUTM system actively acknowledges the relevance of national rights and their scope of protection.
Where conflicts arise between EUTMs and national trade marks or other national rights, there is no hierarchy determining that one system prevails over the other; instead, these conflicts apply the principle of priority.
If the respective requirements are met, earlier national trade marks or other earlier national rights can prevent registration of, or invalidate a later EUTM.
Although the TM Directive and its subsequent implementation have harmonised the laws relating to registered trade marks, no such harmonisation has taken place on an EU scale with regard to non-registered trade marks nor for most other earlier rights of a similar nature.
These un-harmonised rights remain completely governed by national laws.
Furthermore, there are rights, other than trade marks whose acquisition and/or scope of protection is governed by Union law.
Article 8(4) EUTMR is theground of oppositioagainst an EUTM application based on an earlier non-registered trade mark or other sign used in the course of trade protected under Union law or the laws of the Member States, subject to the conditions of that provision.
Article 8(4a) EUTMR is the ground of opposition against an EUTM application based on an earlier designation of origin or geographical indication protected under Union law or the laws of the Member States, subject to the conditions of that provision.
Article 8 is amended as follows:
(a) the following paragraph is inserted:
“4a. Upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:
(i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;
(ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.”;
(b) paragraph 5 is replaced by the following:
“5. Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark”