EU Trademark Defense: Stopping Bad Faith Applications
Due to the unique examination mechanism of the European Union Intellectual Property Office (EUIPO), the system relies entirely on market self-regulation and proactive enforcement by rights holders. As a result, standard trademark practices used in Hong Kong, Mainland China, or the US simply do not apply here.
Even if someone copies your brand, the Registry will not step in to block them, instead, they will approve the registration anyway. To protect your rights, you must actively monitor new filings and immediately lodge an opposition the moment you spot an identical or confusingly similar trademark application.
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The Scope of Substantive Examination for EU Trademarks
While the EUIPO does conduct a substantive examination, the authorities focus strictly on “absolute grounds”. This means that upon receiving an application, the examiner only checks whether your trademark possesses distinctiveness, whether it consists of generic industry terms, or if it violates public policy or deceives consumers. Provided the application encounters no such absolute grounds for refusal, the registry will allow the trademark to proceed to publication. The authorities completely ignore whether a trademark is identical, confusingly similar, or a direct copy of someone else's brand.
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Why the Registry Doesn’t Automatically Reject Identical or Similar Trademarks
The most unique part of the EU trademark system is that the authorities completely ignore “relative grounds” during examinations. This means that even if an identical or similar brand already exists in their system, the office will never reject a new application on its own.
This passive approach by the EUIPO is based on three reasons:
(1)
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Respect for Business Coexistence: The EUIPO believes that even if two brands are similar, businesses can still run smoothly in different member states or markets without any issues. The two companies might even have a coexistence agreement to share the market. If the office automatically blocks new applications, it would limit market freedom and business flexibility.
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(2)
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Saving Time Across Member States: The EU covers 27 member states. If the authorities had to check every new application against all local and international trademarks across the entire region, the process would become incredibly slow and inefficient.
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(3)
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Leaving Enforcement to the Brand Owners: The EUIPO leaves the decision of whether to block a similar new application entirely to the original brand owner. When the authorities spot a similar trademark, they will only send a search report to warn the existing owner (only when the owner chose to receive these alerts). Whether to stop the new application or not is entirely up to the business.
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Defensive Strategies to Block Similar Trademarks
Because the authorities do not step in, businesses must take proactive action. To protect your brand, you should use the following strategies:
(1)
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Regular Trademark Monitoring: There is only a 3-month opposition period between the publication of an EU trademark and its official approval. Businesses should hire a professional trademark agent or use a monitoring system to check official publications regularly, ensuring any similar new applications are spotted right away.
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(2)
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File an Opposition During Publication: If your monitoring system finds a similar new application, you must act within this 3-month publication period to file an opposition with the EUIPO. This is the most direct and legal way to block a new application.
(a)
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Two Main Arguments: High Similarity and Consumer Confusion
You need to prove to the authorities that your trademark was registered first. You must also show that both the designs, text, and selected goods or services are so similar that they will confuse consumers in the EU.
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(b)
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Use the Cooling-Off Period to Encourage a Settlement
Once the process starts, the authorities enforce a 2-month cooling-off period, which can be extended up to 24 months. This period serves as an ideal timeframe for negotiations. If the new applicant sees they have a low chance of winning, they will often withdraw their application or sign a coexistence agreement to limit how they use the brand in the EU.
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Trademark Invalidation
If you miss the 3-month opposition period and the similar trademark successfully registers, you can still apply for a declaration of invalidity with the EUIPO to overturn their registration. However, invalidity proceedings are a formal legal action. The legal fees and time involved are often several times higher than simply filing an opposition during publication.
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Preventing Bad Faith Trademark Squatting
If an applicant knows your brand already exists but intentionally registers it in the EU anyway (such as a former distributor or business partner), you can apply to cancel their registration based on “bad faith”. The EUIPO treats this type of trademark squatting very seriously. As long as you have solid evidence, the authorities will directly cancel their trademark registration.
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