In 2024, there were 180,443 applications filed to register a European Union (EU) trademark. While creativity knows no bounds – especially given the opportunities offered by artificial intelligence – disputes over trademark identity or misleading similarity are inevitable. In 2024 alone, the European Union Intellectual Property Office (EUIPO) examined 19,637 oppositions. Most disputes arise over similarities in words, images, colors, or sound.

The demands in such claims can vary widely – from requesting outright deregistration of a trademark to demanding compensation for damages. For businesses, one of the most financially painful demands is to cease using a trademark in commercial activity, particularly when products bearing that trademark are already on store shelves and the investment in promotional campaigns has not yet paid off.

Still, receiving a claim is not necessarily a death sentence for your trademark. We recommend evaluating three things that can immediately reveal the claim’s lack of merit – or at least open the door to peaceful negotiations.

Markets and Classes

First, assess whether you and the trademark owner making the claim operate in the same or related markets. This is crucial, because trademark protection is not absolute – it applies only to the categories of goods or services (so-called “classes”) in which the mark is registered.

For example, if an earlier trademark is registered for Class 9 goods (“virtual reality headsets, smartwatches, and glasses”), it could not oppose a similar later trademark registered for Class 30 (“cakes, sandwiches”), and vice versa.

There are 45 goods and services classes in total. Since each additional class costs extra (in the EU: €50 for a second class, €150 for a third or more), businesses usually register a trademark for only the one or few classes in which it will actually be used.

When checking the markets and classes, it often turns out that the goods or services registered by the two companies do not, from a trademark perspective, compete at all – making the claim unfounded. Even identical trademarks can coexist if they are registered for different classes.

For example, EUIPO once reviewed a dispute initiated by the owner of the Spanish trademark “ECYC” against another “ECYC” trademark application. Although the marks were identical, the opposition was dismissed because the Spanish trademark’s goods (“moisture-proof compositions”) were deemed dissimilar to the later EU trademark’s goods (“dried flowers for decoration, natural flowers”). It was decided both marks could coexist in the registry and in the market.

In Lithuania as well, there are cases where similar trademarks owned by different companies coexist successfully because they are registered for different products – for example, “BAJORŲ” for beer and “BAJORŲ” for bread; “PRIMO” for drinking water and “PRIMO” for edible oils and fats, flour, and grain products; or “MAGNUM” for soft drinks and “MAGNUM” for ice cream, frozen confectionery, and other goods. All of these brands belong to different owners and successfully coexist.

The Consumer Profile and Perception

When receiving a claim, it’s also important to assess whether the two marks are truly identical or similar – and whether consumers would actually confuse them. Similarity is typically assessed in three aspects: visual, phonetic, and semantic. If consumers would not confuse the marks on these grounds, the claim has no basis.

The evaluation of confusing similarity depends on several factors, one of which is the type of consumers the goods or services are aimed at and the profile of that consumer.

Different consumer groups have different levels of attentiveness and perception. Professionals with experience and specialized knowledge in a given field are considered more attentive than the general public and thus more likely to notice differences between trademarks.

For example, doctors in a specific field are regarded as more attentive than the average consumer, so the likelihood of confusing even minimally different trademarks is lower. Similarly, users of specialized services such as banking or financial services are generally more careful and conscious, making them less likely to confuse two marks with minor differences.

On the other hand, consumers of everyday goods such as food or soft drinks often make spontaneous purchase decisions without deep consideration. In such cases, the risk of confusing marks with small differences is higher, partly because shoppers do not always have the opportunity to compare trademarks closely, and rely on imperfect mental images.

Therefore, upon receiving a claim, evaluate the sector and market in which you and your competitor operate, and the profile of your and your competitor’s consumers. In some cases, your consumer base might be one that notices even the smallest differences – making your competitor’s claim less valid.

Territories

Another key aspect in trademark disputes is territory. When you receive a claim, check whether the mark cited in the claim is actually registered and used in the territory where your trademark is registered. Trademarks are protected only territorially – that is, only in the regions where they are registered.

For example, EU trademarks are valid in all 27 EU member states, including Lithuania. Lithuanian national trademarks have protection only within Lithuania. An international registration allows protection in 131 countries.

Sometimes, after checking, it turns out that the trademark in the claim is not registered or used in the territory where your trademark is contested – opening the door to an agreement for coexistence.

Negotiation – The Best and Most Common Way to Resolve Disputes

Any dispute can be resolved through constructive dialogue and cooperation, finding a mutually beneficial solution. Even after a dispute arises, it is possible to agree on the use of trademarks in specific, non-overlapping territories or for unrelated goods and services.

For example, in the EU, out of the 19,637 oppositions to EU trademarks filed in 2024, as many as 12,263 ended with an amicable agreement between the parties. The statistics are encouraging and show that peaceful settlements prevail.

Therefore, when you receive a claim, don’t rush into pointless disputes. Constructively clarify the situation, objectively assess both your competitor’s and your own strengths and weaknesses, positions, and options. Such an approach will help you make a strategically sound decision and perhaps avoid a long, costly legal battle.

Article published in Delfi M360