A trade mark is often registered and then forgotten: once the certificate arrives, the matter seems closed. But a trade mark functions as a business asset only when it continues to be managed correctly after registration. Errors at this stage complicate brand protection and can create risks for the value of the company.
Why a Trade Mark Can Represent a Significant Part of Intangible Value
A trade mark may be taken into account in a company valuation, an investment transaction, or a business sale; it can be the subject of licensing; it can sustain legal exclusivity over a sign in the relevant market; and it can serve as an instrument of protection against the unauthorised use of identical or similar signs under the conditions prescribed by law. During due diligence, investors and buyers analyse not merely the fact of registration but the legal status of the trade mark.
Non-Use: The Right Does Not Disappear Immediately — but It Becomes Vulnerable
Where an EUTM has not been put to genuine use in the EU in respect of the goods or services for which it is registered within five years of registration, rights may be revoked under Article 58(1)(a) EUTMR — but not automatically. Five years of non-use does not terminate the registration at the moment the period expires, but it makes the right vulnerable: a third party may initiate revocation proceedings, and in certain proceedings the proprietor may need to demonstrate genuine use in order to rely effectively on the mark.
The Proprietor Does Not Match the Business Structure
A common situation: the mark is registered in the name of an individual, a founder, or a former company, while the operational activities are now conducted by a different legal entity. This discrepancy complicates the sale of a company or the raising of investment — the buyer's lawyers see an asset held by someone who is not the party actually using it.
Where the actual chain of title does not correspond to the register data, it may be necessary before the transaction to reconstruct the documentation, confirm the chain of title, and complete a formal assignment through EUIPO. Where such a gap is discovered during due diligence, the parties may be forced to resolve it in parallel with the transaction itself — which can delay closing or affect the terms of the deal.
The Registration Does Not Cover the Actual Business Activities
A business registers a mark at the outset, then over time expands its product range, launches new lines of work, and enters adjacent markets. After filing, the list of goods and services may be restricted but not extended by adding new items. Covering new activities therefore requires a separate new application and the payment of additional official EUIPO fees — and budgeting for this is worth doing in advance, before a conflicting third-party application appears in respect of the same new goods or services.
Missed Conflicting Applications
EUIPO does not automatically block every new application merely because a similar earlier mark exists. Where a proprietor does not monitor new applications, a potential conflict may go unnoticed within the three-month opposition window following publication. Systematic watch monitoring of the EUIPO register addresses precisely this gap. Once registration has occurred, an opposition is no longer available, and challenging the right may require other procedures — including invalidity proceedings.
When These Gaps Become Apparent
Legal deficiencies in a trade mark most often come to the surface at critical moments: when raising investment, selling a business or a stake in it, entering the EU market, or dealing with a dispute with a partner or competitor. This is when it becomes clear that the company's intellectual capital is not ready to function as a fully effective asset.
Legal support for trade marks allows attention to be drawn to some of these risks before they have the chance to become a problem during due diligence. Dr. Emil Benatov & Partners advises on matters relating to proprietor data, the coverage of goods and services, and the history of use of a mark, and can also advise on monitoring new third-party applications that potentially overlap with your signs.
