The EU trade mark seems like a straightforward and logical tool: one application — and potential protection across all member states at once. If a brand is planning to enter the European market, why not cover it in full?
But this is precisely where one of the most underestimated risks of the EUTM lies.
The Unitary Character as a Source of Risk
The EU trade mark has a unitary character pursuant to Article 1(2) of Regulation (EU) 2017/1001 on the European Union trade mark (EUTMR). This means it operates as a single right throughout the territory of the EU: it cannot be "partially" registered only for those countries where there are no obstacles, if the barrier concerns the EUTM system as a whole. For a detailed overview of the advantages this instrument offers, see the article What Does EU Trade Mark Registration Give You: Benefits for Ukrainian Businesses.
his is where the territorial paradox arises: an application is filed for the entire EU, yet it can be blocked by an earlier right that exists in just one member state.
How It Works in Practice
Following publication of an EUTM application, proprietors of earlier rights may file an opposition. And that earlier right need not be a prior EU trade mark.
Under Article 8 EUTMR, an opposition may be based on:
- an earlier national trade markregistered in one EU member state (Article 8(1)–(2) EUTMR);
- an international registrationwith effect in a specific member state;
- a well-known mark in one member state within the meaning of 6Article 6bis of the Paris Convention (Article 8(2)(c) EUTMR) — for more on this status, see the article Well-Known Trade Marks;
- an unregistered trade mark or other signused in the course of trade that gives its proprietor the right to prohibit the use of a later mark (Article 8(4) EUTMR).
In other words, a business may carry out a clearance search at EUIPO level, find no conflict with any earlier registered EUTM — and still receive an opposition from the proprietor of a national mark in, say, Spain, Poland, Germany, or Italy. The opposition procedure and timelines are described in the article EUIPO Opposition Against an EU Trade Mark: Procedure and Timelines..
For the applicant, this often comes as a surprise: the brand was developed for "Europe in general," yet the obstacle arose from a right the applicant may never have been aware of.
Why a Local Right Can Carry Such Weight
The EUTM system was not designed to "absorb" national rights — it was designed to coexist with them.
National trade marks continue to subsist. Rights acquired earlier in individual member states do not disappear simply because another company decides to file an EUTM application.
If the proprietor of an earlier national mark demonstrates a likelihood of confusion or another relevant ground, the EUTM application may be refused — in full or in part with respect to the relevant goods and services (though not territorially: the mark is not "carved out" for a particular country but refused by Nice class). In the case of unregistered signs 8(4) EUTMR, the position is more complex: the mere fact of using a name is not sufficient. The proprietor must demonstrate that:
- the right arose prior to the filing date or priority date of the EUTM application;
- the sign has been used in the course of trade
- its significance is more than merely local ("more than mere local significance" — a direct requirement of the Regulation);
- the applicable national or Union law gives the proprietor grounds to prohibit the use of the later mark.
Where these conditions are met, even an unregistered right can constitute a serious obstacle to EUTM registration.
The Strategic Problem for Business
The EUTM is often perceived as the "broadest" option and therefore automatically the best one. But a wider territorial scope also means a wider field of potential conflicts.
When a company files an EUTM application, it effectively enters the legal landscape of all 27 member states. This means that potential conflicts must be assessed not only at the EUIPO register level, but also in light of national rights.
For some businesses, the EUTM is indeed the optimal solution: one application, a single procedure, potential protection across the entire EU.
For others, however, the strategy may differ. If a company genuinely plans to operate in only two or three countries, it may sometimes be more prudent to begin with national applications in the key jurisdictions. This reduces the risk of an opposition from the proprietor of a right in a country that is not, in practice, a priority market for the business.
When a National Strategy May Be the Better Choice
A national or step-by-step approach is worth considering when:
- the business is entering only selected EU markets;
- a preliminary search reveals a risk of conflict in one or more countries;
- the brand matters in a specific jurisdiction rather than across the EU as a whole;
- the company wishes to build its rights portfolio gradually, rather than assuming the risks of an EU-wide application from the outset.
This does not mean the EUTM is a poor instrument. On the contrary, for many companies it remains one of the most effective means of protecting a brand in Europe. But the EUTM is not always the "simpler" path. Sometimes a single application covering the entire EU creates not one opportunity but 27 potential zones of risk.
Practical Conclusions
Before filing an EUTM application, it is important to assess not only whether the name is free in the EUIPO register. EUIPO,The following questions must also be addressed:
- in which countries does the business actually plan to operate;
- whether similar national trade marks exist in those countries;
- whether unregistered or other earlier rights may exist (Article 8(4) EUTMR);
- how significant the risk of opposition is;
- whether a national or phased strategy might be safer.
The key question is not always: "Can we file an application covering the entire EU?"
The more pertinent question is: "Is an EU-wide application the best strategy for this particular brand, these markets, and these risks?"
This is where preliminary clearance searches and strategic assessment deliver the greatest value. They do not simply help you file an application — they help you choose a route that minimises the risk of conflict before the business has invested in a brand, packaging, advertising, and market entry.
And if a local right has already blocked a European application, there is an instrument designed to preserve priority: conversion of the EU trade mark into national applications under Article 139 EUTMR. How it works and how much time is available to request it — see the article Conversion of an EU Trade Mark: What It Is and How Much Time You Have to File a Request..
