Last updated: September 2026 — by Avv. Claudia Roggero, Rome Bar since 2003, intellectual property and entertainment law, DANDI.media
The EU and national trademark systems coexist rather than compete, and neither automatically prevails. The same brand can be protected simultaneously as an EU trademark and as a national mark in one or every Member State. When rights conflict, the outcome turns on priority — and an earlier Italian registration can bring down an EU trademark across all 27 states.
This guide sets out the framework under Regulation (EU) 2017/1001, the Italian Industrial Property Code, and what it means in practice for a cross-border portfolio.
In this guide
- The coexistence principle
- The priority rule
- Earlier rights that can block an EU trademark
- Designations of origin and geographical indications
- Seniority: the bridge between the two systems
- Acquiescence: when coexistence becomes permanent
- Italian implementation
- EU trademark, national, or both
- Coexistence agreements in practice
- Frequently asked questions
- How DANDI supports trademark owners
The coexistence principle
The EU trademark system, governed by Regulation (EU) 2017/1001, provides a single registration covering all 27 Member States uniformly. National systems, harmonised but not unified by Directive (EU) 2015/2436, provide separate registrations valid only within the relevant state.
The two operate on parallel validity: the same proprietor can hold an EU trademark and one or more national marks for identical signs, and different proprietors can hold an EU trademark and earlier national rights over similar signs, provided the geographic and substantive conditions are met.
The EU system is not self-contained. National rights — registered and unregistered marks, designations of origin, geographical indications and other earlier rights — can block an EU application, notwithstanding that the EU system has its own complete examination framework.
The priority rule
Conflicts resolve through priority: prior tempore, potior iure. The earlier-acquired right, whether national or EU, prevails over the later one in the territory where the earlier right is valid.
- An earlier Italian mark can block registration of a later EU trademark for the same or similar sign and goods;
- An earlier EU trademark can block a later Italian application on parallel grounds;
- Each system has its own opposition procedure against the later application;
- Invalidity actions can be brought against registrations already granted, on the same grounds and with longer time limits.
The asymmetry worth understanding: an EU trademark is a unitary right, so a single earlier national right anywhere in the Union can invalidate it in its entirety. A national mark is exposed only locally. That is the trade-off behind every filing strategy decision below.
Earlier rights that can block an EU trademark
Article 8 of the Regulation lists the grounds on which an opposition can be founded:
| Ground | Earlier right |
|---|---|
| Article 8(1) | Identical or similar earlier trademarks for identical or similar goods and services, where there is a likelihood of confusion — the standard ground |
| Article 8(2) | Defines “earlier trademarks” broadly: EU trademarks, national marks, international registrations designating the EU or Member States, and applications subject to registration |
| Article 8(3) | Marks filed by an agent or representative in their own name without the proprietor’s authorisation |
| Article 8(4) | Earlier non-registered marks or other signs used in trade, protected under EU or national law, of more than mere local significance |
| Article 8(5) | Earlier marks with a reputation, where the later mark would take unfair advantage of or be detrimental to their distinctive character or repute — even for dissimilar goods |
| Article 8(6) | Earlier designations of origin and geographical indications protected under EU or national law |
Article 8(5) is the provision that surprises applicants most often: a reputed mark can block an application in a completely unrelated sector, which means a clearance search limited to the applicant’s own classes is not a clearance search.
Designations of origin and geographical indications
This is the category that matters most for Italian brand owners, and the one most often overlooked by foreign applicants.
Under Article 8(6), an EU trademark application is refused where:
- an application for a protected designation of origin or geographical indication was already submitted under EU or national law before the trademark filing date;
- the designation confers the right to prohibit use of a subsequent mark;
- the opposition is brought by an authorised party.
Italian PDO and PGI registrations — Parmigiano Reggiano, Prosciutto di Parma, Chianti, Aceto Balsamico di Modena, Mozzarella di Bufala Campana and many more — provide robust protection against conflicting applications. And the reach is what makes them powerful: an Italian PDO holder can oppose an EU trademark application across the entire Union, not only in Italy.
The framework runs through Regulation (EU) 1151/2012 on quality schemes for agricultural products and foodstuffs, with parallel regimes for wines and spirits.
For a food, wine or spirits brand touching Italian production terms, a clearance search that does not check the designation registers is incomplete — and this is the single most common cause of refusals in the sector.
Seniority: the bridge between the two systems
The mechanism that actually connects the two systems, and the one most often missed in portfolio planning.
A proprietor who already holds a national mark in a Member State can claim its seniority when filing or after registering an EU trademark for the same sign and the same goods. The effect is that, even if the national registration is allowed to lapse, the proprietor is treated as continuing to enjoy in that state the same rights they would have had if it were still registered.
Two practical consequences:
- Portfolio rationalisation. A brand with a dozen national registrations accumulated over the years can consolidate into an EU trademark with seniority claims, reducing renewal costs without losing the earlier dates.
- Protection against the unitary risk. Where the EU trademark is later invalidated or surrendered, the seniority claim preserves the earlier national position — a hedge against exactly the vulnerability described above.
Seniority is claimed, not automatic, and the conditions on identity of sign, proprietor and goods are strictly applied. It is worth checking at filing rather than discovering later that it was available.
Acquiescence: when coexistence becomes permanent
There is a limit on how long a proprietor can wait before acting.
Where the proprietor of an earlier mark has knowingly tolerated the use of a later registered mark for five consecutive years, they lose the right to apply for a declaration of invalidity or to oppose that use — unless the later mark was applied for in bad faith.
The practical effect is that coexistence in fact becomes coexistence in law. Two marks that a proprietor could once have removed from the register become permanently entitled to sit alongside each other.
This is why portfolio monitoring is not administrative housekeeping, and why many coexistence agreements are negotiated: not because the parties want to share the market, but because one of them has waited long enough that sharing is no longer optional.
Italian implementation
Italian trademark law operates through the Industrial Property Code (D.Lgs. 30/2005), in particular:
- Article 12 — requirements for protectability, including the earlier rights barriers;
- Article 20 — scope of protection and the infringement framework;
- UIBM, the Italian Patent and Trademark Office, handling national filings, examination and opposition;
- the Italian transposition of Directive (EU) 2015/2436 through amendments to the Code.
For Italian brand owners the practical reality is parallel filing: an EU trademark through EUIPO for pan-European coverage, plus selective national filings where the brand has particular Italian relevance — regional heritage brands, or brands building an Italian presence before EU expansion.
EU trademark, national, or both
| Factor | What it means for the choice |
|---|---|
| Geographic scope | Where the brand actually operates, or plans to within the use period |
| Cost | An EU filing costs more than one national filing, and considerably less than filing across several states |
| Risk profile | An EU trademark can be invalidated centrally on a single earlier national right anywhere in the Union; a national mark is exposed only locally |
| Genuine use | Use anywhere in the Union can sustain an EU trademark; a national mark requires use in that state |
| Conversion | A failed EU application can be converted into national filings in selected states, preserving the priority date |
| Seniority | Earlier national rights can be carried into the EU trademark rather than abandoned |
For most international brands the workable answer is a core EU trademark plus strategic national filings where the brand has particular local relevance or where an additional layer genuinely adds protection.
The conversion mechanism deserves more attention than it usually gets. It means a failed EU application is not a lost priority date: it can be salvaged into the states where the blocking right does not exist. Knowing this changes how an opposition is fought, because settling early may cost more than losing.
Coexistence agreements in practice
Where conflicting rights exist, parties frequently resolve through a coexistence agreement rather than litigation:
- Use commitments defining how each party will use its respective mark;
- Geographic limitations — one party in certain territories, the other elsewhere;
- Goods and services limitations — one in food, the other in beverages;
- Distinctive element commitments — one party always uses additional graphic elements;
- Mutual recognition with no-challenge clauses.
They are a practical alternative to litigation, but they need careful drafting. Two risks in particular: an agreement that permits confusingly similar use can undermine the distinctiveness of both marks, and a no-challenge clause drafted too broadly can itself raise competition law questions.
And a coexistence agreement binds the parties, not the register. It does not prevent a third party from opposing, nor an office from refusing.
Frequently asked questions
Can the same brand be registered as both an EU and a national trademark?
Yes. The systems coexist on a principle of parallel validity, and the same proprietor can hold an EU trademark and national registrations for identical signs. Seniority claims allow the earlier national rights to be carried into the EU trademark.
Can an earlier Italian trademark block an EU trademark?
Yes, and across the whole Union. Because the EU trademark is a unitary right, a single earlier national right anywhere in the EU can prevent registration or invalidate it in its entirety. It is the central asymmetry between the two systems.
What earlier rights can be used to oppose an EU trademark?
Under Article 8 of Regulation (EU) 2017/1001: earlier identical or similar marks with likelihood of confusion, marks filed by an agent without authorisation, unregistered signs used in trade of more than local significance, earlier marks with a reputation even for dissimilar goods, and earlier designations of origin and geographical indications.
Can a reputed trademark block an application in an unrelated sector?
Yes. Article 8(5) allows the proprietor of a mark with a reputation to oppose a later mark that would take unfair advantage of, or be detrimental to, its distinctive character or repute — even where the goods and services are dissimilar. A clearance search limited to the applicant’s own classes will not find it.
Can a PDO or PGI block a trademark application?
Yes. Where an application for a protected designation was submitted before the trademark filing date and confers the right to prohibit subsequent use, the trademark application is refused. An Italian PDO holder can oppose across the entire Union, not only in Italy.
What is seniority and why does it matter?
A proprietor holding an earlier national mark can claim its seniority in an EU trademark for the same sign and goods. Even if the national registration lapses, the proprietor is treated as continuing to enjoy the same rights in that state. It allows portfolio consolidation without losing earlier dates, and preserves a national position if the EU trademark falls.
What happens if I tolerate an infringing mark for too long?
Where the proprietor of an earlier mark has knowingly tolerated use of a later registered mark for five consecutive years, the right to seek invalidity or to oppose that use is lost, unless the later mark was filed in bad faith. Coexistence in fact becomes coexistence in law.
What happens if my EU trademark application is refused?
It can be converted into national applications in selected Member States, preserving the original priority date. A refusal therefore does not necessarily mean losing the filing date — which is worth weighing before settling an opposition on unfavourable terms.
Is a coexistence agreement binding on third parties?
No. It binds the parties to it. It does not prevent a third party from opposing, nor an office from refusing an application, and it needs careful drafting to avoid weakening the distinctiveness of both marks.
How DANDI supports trademark owners
- Filings — EU trademarks through EUIPO and national marks through UIBM, with seniority claims where available
- Clearance — pre-filing searches and freedom-to-operate analysis, including the designation registers
- Opposition strategy at EUIPO and UIBM, and defence against opposition
- Invalidity actions and defence
- PDO and PGI conflicts and food, wine and spirits brand strategy
- Coexistence agreements — drafting and negotiation
- Portfolio audit across EU and national systems, including consolidation and renewal strategy
- Cross-border enforcement and litigation
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Related guides
| Topic | Resource |
|---|---|
| Brand identity legal protection | /en/brand-identity/ |
| Lambretta trademark case — genuine use | /en/trade-mark-lambretta/ |
| Mr. Kebab vs Mister Kebap — likelihood of confusion | /en/mr-kebab/ |
| Yoko Ono v. John Lemon — posthumous trademark | /en/yoko-ono-sues-john-lemon/ |
| Parodying fashion labels | /en/parodying-fashion-labels/ |
| Trade secrets in Italy | /en/trade-secrets-in-italy/ |
| Copyright law in Italy and Europe | /en/copyright-law-italy-europe/ |
Primary sources
Regulation (EU) 2017/1001 on the European Union trade mark; Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks; Regulation (EU) 1151/2012 on quality schemes for agricultural products and foodstuffs; Italian Industrial Property Code (D.Lgs. 30/2005).
This guide states the position at the date above. Confirm current provisions before relying on it for a filing or a dispute.
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