What to do if your trademark is already being used in the EU without registration?

Is Your Brand in the EU No Longer Yours? Panic vs. Action Plan

You’re preparing for expansion into the European Union, investing resources in marketing, and suddenly you see… your brand, but another company is operating under it. This is not a death sentence, but a legal challenge with a clear plan for resolution, although solving it might take as long as the trademark registration itself. In this article, we will break down a step-by-step algorithm of actions to regain control of the situation and understand that, unlike Ukraine, the EU’s registration procedure has its own strict rules. Of course, such problems could have been avoided, and we thoroughly discussed preventive measures in our main article on key differences and strategies for TM registration in Ukraine and the EU. But if the problem has already arisen, set aside panic and proceed to gather facts.

Don’t Panic: Gather Evidence and Analyze the Situation

The first emotional reaction upon discovering a “duplicate” is shock. However, in legal matters, emotions are a bad advisor. Your first task is to turn panic into structured information gathering. The choice of subsequent strategy depends on the completeness of your evidentiary basis. We need to clearly establish what exactly is being used and where, and then conduct a little “reconnaissance” to understand who this competitor is and what their intentions are. These are crucial steps that will determine whether you face negotiations, a legal dispute, or perhaps even a local rebranding.

What exactly are they using and where?

Your goal at this stage is to collect objective evidence that can be presented to lawyers, and subsequently, possibly to EUIPO (European Union Intellectual Property Office). Act methodically, as if you are gathering materials for a case. Create a separate folder on your computer and systematically save everything you find.

Your checklist for evidence collection:

• Website and online stores. Take full screenshots of the homepage, pages with goods/services where your TM is used, and the “Contacts” section. It is important that the screenshot clearly shows the URL and current date. If the website has language versions for different EU countries (e.g., .de, .fr, .es), document each of them.
• Social media (Instagram, Facebook, LinkedIn). Save screenshots of profiles, posts, and advertisements where the disputed designation appears. Pay attention to the publication date and user comments, which can confirm the geography of activity.
• Products and packaging. If possible, purchase a sample of the “clone” product or find its photos on marketplaces (Amazon, eBay). Take detailed pictures of the product itself, labels and packaging, where the use of your TM is clearly visible.
• Publications and advertising. Use search to find mentions of the competitor company in local online media, blogs, or at exhibitions. This will help establish how long and in what territory they operate.

Once you have compiled this “digital archive,” the next step will be to analyze the identity of your opponent. This will help understand their motives and choose the right tactics.

Who is this “clone” and what are their intentions?

Gathered evidence is only half the battle. Now your task is to understand who you are dealing with. Your entire future strategy depends on the profile of your “double”: whether you should prepare for tough negotiations, or if one letter will suffice. Conventionally, all “clones” can be divided into three types:

• Accidental match. The most common case. A small local business (for example, a coffee shop in Lisbon or a workshop in Munich) might have chosen a similar or identical name, without even suspecting your existence. Their intentions are usually not hostile, and they may be open to dialogue.
• Direct competitor. This is a company from your niche that operates in the international market. They may or may not have known about you, but their presence under a similar name creates a direct threat to your business due to consumer confusion.
• “Patent troll” or cybersquatter. The most unpleasant scenario. This is an individual or company that deliberately monitors successful brands from other markets (for example, from Ukraine) and registers their TMs in the EU under their own name, to then demand a ransom or block your market entry.

To determine the type of “clone,” the first step is to check its legal status. Conduct a search in the EUIPO database (eSearch plus). If you find a TM registered to them there, this significantly complicates the situation, as you will now have to challenge their rights. If there is no registration, your position is stronger, and you can act proactively. This is where the fundamental comparison of TM registration procedures in Ukraine and the EU becomes apparent: in Europe, having a previously filed application provides a huge advantage. The collected information will help you understand which legal scenario you are most likely to face.

Legal Assessment: What Are Your Options?

Once you have evidence of use and understand who your opponent is, it’s time to move on to legal analysis. Your situation, though unpleasant, is not unique. European intellectual property law provides for several possible scenarios, and there’s a specific response strategy for each. Unlike the more unified trademark registration process in Ukraine, in the EU, numerous nuances must be considered, including the national practices of individual countries.

Your subsequent actions depend on three key factors: whether the «clone» used the name in good faith before you did, whether their actions were aimed at unfair competition, or if it’s simply a case where someone was quicker. Let’s examine each of these scenarios in detail so you can assess your chances and choose the optimal path.

Scenario 1: Bona Fide Prior Use

This is one of the most complex cases, demonstrating a key difference in approaches to brand protection. In some EU countries (e.g., Germany and France), the doctrine of «prior use rights» applies. This means that if a local company started using a name for identical goods or services in a certain territory earlier than you filed for TM registration, it may acquire the right to continue this activity locally.

Even if you successfully register your trademark for the entire European Union, you will not be able to prohibit such a company from operating under that name within its city or region where it conducted business prior to your registration. Of course, the burden of proof lies with them. To confirm «prior use», your opponent must provide significant evidence, for example:

• Commercial documents: invoices, contracts with suppliers and customers, dated prior to your application.
• Advertising materials: booklets, catalogs, publications in the local press, screenshots of old website versions.
• Participation in exhibitions: documents confirming participation in local trade fairs or events.

This scenario means that you may have to coexist with a «clone» in the same territory, which can complicate marketing efforts. However, if their actions were in bad faith, the situation changes dramatically.

Scenario 2: Bad faith registration

In contrast to good faith use, this scenario is an act of deliberate unfair competition. Bad faith registration is a situation where another person applies to register your trademark, knowing full well about its existence, your activities, and your intentions to enter the EU market. This is often done by former business partners, distributors, or so-called “patent trolls,” whose goal is to block your path or later sell you the rights to your own brand at an inflated price.

Fortunately, EU law considers “bad faith” a direct ground for declaring a registration invalid. If you can prove the applicant’s bad faith intentions, you have the right to file an application with EUIPO to annul such a registration. However, the burden of proof lies with you. You will need to provide compelling evidence confirming one or more of these criteria:

• The applicant knew or could not have been unaware of the existence and use of your TM at the time of filing the application (e.g., through previous negotiations, joint work, your popularity in the niche).
• An intention to prevent you from entering the EU market under your brand. This can be confirmed by correspondence or the absence of any real commercial activity by the applicant under that TM.
• An intention to create confusion among consumers by impersonating you or your product.
• Speculative nature of the registration — where the sole purpose is to resell the rights to the brand owner.

Proving bad faith is a complex process that requires careful preparation of evidence. This is one of those cases where the question of “how to patent a name in Ukraine” differs fundamentally from European realities, where the intentions of the parties are of great importance. But if you succeed in doing so, the “clone” registration will be cancelled. However, there are situations where there is no malicious intent, but only an unfortunate coincidence of circumstances.

Scenario 3: Accidental Match and the “First to File” Principle

Unlike bad-faith registration, this scenario is the most common and, perhaps, the most frustrating. This is a situation where another company, without any malicious intent or knowledge of you, simply proved to be quicker and filed an application for registration of an identical or similar TM before you did. In the European Union, as in most countries worldwide, the fundamental principle of “first to file” applies – “whoever files first is right.”

This means that the priority right to a trademark is granted to whoever first filed an application with the intellectual property office, not to whoever first started using it (with the exception of rare cases of “prior use,” which we discussed earlier). This is a key risk we always warn clients about when they plan international expansion. That’s why prevention and timely registration are much more effective and cheaper than solving a problem that has already arisen. Here, the comparison of TM registration procedures in Ukraine and the EU becomes particularly illustrative: if in Ukraine you can use a brand for years and then register it, in the EU such a delay can cost you the market.

If your “clone” filed the application first and did so in good faith, your legal options for challenging their rights are extremely limited. It will be almost impossible for you to prove your rights to the brand in that territory. This situation forces a shift from legal analysis to making difficult business decisions, which we will discuss next.

Strategic decisions: negotiations, litigation, or rebranding?

Once you have gathered evidence and analyzed the legal status of your ‘clone,’ it’s time for the most crucial stage — choosing a strategy. This decision goes beyond purely legal considerations and directly impacts your business goals, budget, and timeline. Choosing the wrong path can cost not only money but also valuable time needed to enter the market. As we noted earlier, understanding the key differences in TM registration in Ukraine and the EU helps to adequately assess each option.

Three main paths open before you, each with its advantages and risks. You can try to negotiate, choosing the path of diplomacy, enter the fight for your rights at EUIPO, or make a pragmatic decision about a local brand change. Next, we will analyze each of these scenarios in detail so that you can make an informed choice that best suits your business interests.

The Path of Diplomacy: Negotiations and TM Buyout

Before embarking on a lengthy and costly legal battle, it is worth considering a peaceful approach. Often, this is the quickest and most economically advantageous way to resolve the issue, especially if you are dealing not with a “patent troll” but with a good-faith local business that simply chose a similar name. The diplomatic approach begins with a well-drafted cease and desist letter.

A cease and desist letter, or cease and desist letter, is not just a message but an official legal document that demonstrates the seriousness of your intentions. To ensure it doesn’t appear as an empty threat, it must be prepared by a lawyer and should contain:

• Clear substantiation of your rights: evidence of your TM’s use, its recognizability (if applicable), and filed registration applications.
• Description of the infringement: specific examples of their mark’s use that creates confusion.
• Demand: to cease using the mark by a specified date.
• Proposal: openness to dialogue for resolving the situation without recourse to EUIPO.

If the opponent is open to contact, an option is to buy out the rights to their TM (if registered) or simply their domain name and social media pages. The cost here is subject to negotiation. It depends not so much on the formal stages of trademark registration, but on the other party’s investments in their local brand and their willingness to abandon it. For example, in one of our cases, a Ukrainian furniture manufacturer discovered a company with a similar name in Spain. Instead of a lawsuit that could have lasted for years, we helped the client buy out the rights for €15,000. This was significantly cheaper and faster than a potential dispute. However, if negotiations reach an impasse, more decisive actions must be taken.

The Path of Struggle: Challenging Registration at EUIPO

If negotiations fail or you encounter an unfair competitor, the only option is to protect your rights through the official procedures of the European Union Intellectual Property Office (EUIPO). This is a complex, lengthy, and expensive path, advisable only when your brand is a key asset and your legal positions are strong. There are two main procedures:

• Opposition. You can file an opposition if the “clone” trademark application is not yet registered but has already been published. You have 3 months from the publication date to do so. The procedure includes a two-month “cooling-off period” for potential amicable settlement and a subsequent exchange of arguments and evidence.
• Cancellation. If a competitor’s trademark is already registered, you can file an application for its invalidation. The main grounds are bad faith registration or non-use of the trademark for 5 consecutive years. This is a more complex procedure requiring irrefutable evidence.

Be prepared for the answer to the question, how long does trademark registration take, to be significantly shorter than the duration of a dispute at EUIPO. The challenge process can take from 1.5 to 3 years. The cost is also substantial: official fees (from €320 for opposition to €630 for cancellation) are only a small part. The main expenses are the services of European IP lawyers, which can range from €5,000 to €15,000 or more, depending on the complexity of the case. This is where the comparison of trademark registration procedures in Ukraine and the EU shows the biggest disparity in the complexity and cost of rights protection. However, if fighting for the brand is not economically justified, there is a third, pragmatic option.

The Path of Pragmatism: Local Rebranding

Sometimes the wisest business decision is not to enter a battle that is pre-destined to fail or is economically unviable. If your legal position is weak (for example, in the case of a good-faith ‘first’ applicant) or potential legal fees and years of waiting exceed the value of the brand itself in the new market, local rebranding becomes the fastest and cheapest solution.

This is not a defeat, but a strategic adaptation. Instead of spending resources on litigation, you direct them towards launching the product under a new, legally clear name. This allows you to enter the market here and now, start sales, and build recognition, while potential competitors may spend years engaged in legal battles. Even global giants follow this path:

• The deodorant Axe is sold in the UK, Ireland, and Australia as Lynx due to issues with the rights to the original name.
• Opel cars are known as Vauxhall in the UK.
• The Burger King chain operates under the name Hungry Jack’s in Australia.
• Dove chocolate is called Galaxy in Britain.

These examples prove that market success depends on product quality and marketing, not just the original name. Choosing this path, the main thing is not to repeat the mistake. Before launching a new name, a thorough check must be carried out to ensure its uniqueness. Of course, such a pragmatic approach, while effective in a crisis, highlights one main truth: the best way to solve a problem is to prevent it from arising.

Prevention: How to Protect Your Brand Proactively

All the scenarios discussed above – from negotiations to rebranding – are a reaction to a problem that has already occurred. This is ‘firefighting’ that demands resources, time, and nerves. However, the most effective brand protection strategy is prevention, which allows avoiding the very possibility of such a ‘fire’ occurring. Understanding the differences in intellectual property approaches, particularly comparing the trademark registration procedure in Ukraine and the EU, is key to building robust protection right from the start. Instead of figuring out how to combat a ‘clone,’ it is much wiser to ensure it simply never appears. Next, we will look at two fundamental preventive steps that should become your rule before entering any new market.

Sidebar: Preliminary Search – The Best Prevention

A preliminary search for identity and similarity is not a formality, but a mandatory step that protects your business from future conflicts and financial losses. It is an in-depth analysis of databases of registered and pending trademarks (EUIPO, WIPO, national offices of EU countries) to identify not only identical but also confusingly similar designations. Everything is checked: visual, phonetic, and semantic similarity in the classes of goods and services relevant to your business.

Ignoring this step is the main reason why companies encounter the problems described in this article. You can invest thousands of euros in marketing, only to later find out that your chosen name is already taken, forcing you to start all over again. That is why a thorough check is a mandatory first step in our trademark registration service — we minimize your risks even before you spend a single euro on official fees. This search gives you a clear answer: whether the path for your brand is clear. But even a “green light” after the check requires you to take the next decisive step.

Apply Early, Don’t Wait for the Launch

So, you’ve conducted a search and confirmed that the name is available. This is great news, but this “window of opportunity” will not be open forever. As we have repeatedly emphasized, the EU operates under the unwavering principle of “first to file” – “whoever files first is right.” This means that your brand rights arise not from the moment you start using it, but from the date of filing the application with the office. Every day of delay is a risk that someone else, even without malicious intent, will get ahead of you.

Therefore, the main advice is: apply for TM registration in the EU immediately as soon as you have serious intentions for expansion, backed by a business plan. Don’t wait for sales to launch, the first contracts with distributors, or for investments to be secured. The ideal moment is the stage of final brand approval for the European market. For companies planning to enter several countries at once, the Madrid System for international registration can be a convenient tool. It allows you to obtain legal protection in many member countries of the system through a single application and the payment of one set of fees, which significantly simplifies intellectual property portfolio management. These preventative steps transform your brand from an idea into a protected legal asset.

Your Brand — Your Most Valuable Asset. Protect It

Discovering a “clone” of your brand in the EU market is not a disaster, but a business challenge that requires a calm and professional approach. As you’ve seen, there’s a clear algorithm of actions: from gathering evidence and analyzing the situation to choosing one of three key strategies — negotiations, contesting at EUIPO, or pragmatic rebranding. Each of these paths has its own cost, duration, and level of risk, and the right choice depends solely on your business goals and legal positions.

Timely legal advice and a correctly chosen strategy can save years of your work and significant investments. A deep understanding of how trademark registration procedures differ, and a thorough comparison of trademark registration procedures in Ukraine and the EU, is the foundation for both effective conflict resolution and prevention. Remember, prevention is always cheaper than cure.

Don’t wait for the problem to find you. If you’ve already encountered competitors using your trademark or are just planning to enter the EU market, seek consultation. We will help develop a protection strategy that best suits your brand’s interests.