Discovering that a local European business already uses your brand name does not have to ruin your EU expansion. While the strict “all or nothing” rule means a single local conflict can block your entire application, there are proven legal workarounds. Learn how to navigate trademark oppositions using coexistence agreements and strategic conversions to save your brand identity.
Expanding to the European Union means reaching a unified market of over 440 million consumers. But what happens if you begin your EU trademark registration process, only to discover that a small, local business in Europe already owns a brand name identical or confusingly similar to yours? For many US founders, this feels like a dead end that forces a costly international rebrand. However, encountering a trademark conflict does not automatically mean you have to surrender your brand identity.
The “All or Nothing” Problem
To understand how to solve a conflict, you must first understand how the European system works. The European Union Intellectual Property Office (EUIPO) offers a unitary system where a single application, if successful, protects your brand across all 27 member states simultaneously.
However, this convenience comes with a significant catch: the “all or nothing” rule. Because the trademark applies universally across the EU, an issue in just one member state can derail the entire application. For example, if a small local business in Portugal or Greece holds a similar name and files an opposition, your EU-wide application will be rejected. You cannot simply “carve out” or exclude Portugal from your EU application to save the rest.
It is also crucial to know that the EUIPO does not actively block your application based on prior existing trademarks. Instead, they conduct a basic examination and then publish your application. It is then up to existing brand owners across the 27 countries to monitor the registry and file an “opposition” if they feel your name is too similar to theirs.
The Solution: Coexistence Agreements
If a European company spots your application and files an opposition, the most effective and business-friendly solution is often a “Coexistence Agreement.”
A Coexistence Agreement is a binding legal contract between your US company and the European trademark owner. Through negotiation, both parties agree that their brands can exist in the European market simultaneously without causing consumer confusion.
How is this possible? The agreement usually establishes strict boundaries. For instance, you might agree to use the name exclusively for SaaS software, while the European company retains the rights for physical computer hardware. Alternatively, you might agree to alter your logo’s colors or explicitly state that you will not run active marketing campaigns in their specific home country. Once signed and submitted to the EUIPO, the opposition is dropped, and your registration can proceed.
Alternative Strategic Workarounds
If the opposing company refuses to negotiate a coexistence agreement, you still have strategic options to register a trademark in Europe:
- Check for “Non-Use”: In the EU, brand owners are granted a five-year grace period. However, after this period expires, their mark becomes vulnerable to cancellation if not genuinely used in the EU. If the company opposing you has an older trademark but isn’t actually conducting real business with it, you can file a counter-action to cancel their trademark entirely.
- Conversion to National Applications: If a direct EUIPO application faces a localized issue (for instance, a dispute in just one specific country), the system offers a unique flexibility: you can convert your application into separate national applications, saving your rights in the remaining 26 countries without losing your initial filing date.
Save Your Brand with BrandR
A trademark opposition in Europe is a hurdle, not necessarily a roadblock. When a conflict arises, you need skilled negotiators who understand both the legal frameworks and the business realities of the European market.
At BrandR, we help American businesses protect your brand in Europe. We specialize in navigating EUIPO oppositions, negotiating favorable coexistence agreements, and executing strategic conversions to keep your international expansion on track. Do not abandon your brand name without a fight—let our experts secure the transatlantic rights you deserve.
