UNREGISTERED TRADEMARKS

What is meant by an “unregistered trade mark”? Is this the same as a pending trade mark application (i.e. a trademark that has been applied for but not yet registered by the trade mark register)?

No. Unregistered trademarks are not the same as trademark applications. In order to obtain protection for an unregistered trademark, specific requirements set forth by national law have to be fulfilled.

Unregistered trademarks are NOT recognized in the following countries: Czech Republic, France, Italy and Portugal.

For all other EU countries, unless otherwise provided in Annex 1, the following rules apply with regard to unregistered trademarks.

A Prior Right to a name can be claimed on the basis of:

(i) a well-known unregistered trade mark as provided for in Article 6bis of the Paris Convention on the Protection of Industrial Property (as amended), or
(ii) an unregistered trade mark other than one falling under (i) above that is protected under the law of one of the member states referred to in Annex 1 as being a member state protecting unregistered trade marks

It is sufficient to prove the existence of such a Prior Right as detailed below, without there being an obligation to provide the documentary evidence in point 1 of the "General Substantive Requirements" from EURid's Sunrise Rules:

1. It is in any case sufficient to submit a copy of a relevant final judgment by a court or an arbitration decision of an official alternative dispute resolution entity competent in at least one of the member states stating that the Applicant has protection for the complete name for which a Prior Right is claimed.

2. If, under the law of the relevant member state, the existence of the Prior Right claimed is subject to certain conditions relating to the name being famous, well known, publicly or generally known, have a certain reputation, goodwill or use, or the like, the Applicant must furthermore submit:

(i) an affidavit signed by a competent authority, legal practitioner, or professional representative, accompanied by documentation supporting the affidavit or
(ii) a relevant final judgment by a court or an arbitration decision of an official alternative dispute resolution entity competent in at least one of the member states

stating that the name for which a Prior Right is claimed meets the conditions provided for in the law (including relevant court decisions, scholarly works and such conditions as may be mentioned in Annex 1 (if any)) of the relevant member state in relation to the type of Prior Right concerned.

Special Cases:

United Kingdom & Ireland - Documentary Evidence allowed as in point 2 above only.

Lithuania - Documentary Evidence as in point 2 above is excluded.

Sweden - Documentary Evidence as in point 2 (i) above is excluded.