Protecting Your Brand: The Exclusive Rights of Trademark Holders

Registration of a trademark grants the holder exclusive rights to the trademark. This right enables the holder to prohibit third parties from using the trademark in their commercial activities without consent. The trademark holder can initiate infringement proceedings before a competent court to enforce these rights.

Use of Identical or Similar Signs

The holder of a registered trademark may seek to prevent third parties from using an identical or similar sign in several circumstances:

• Use of an identical sign for goods or services identical to those for which the trademark is registered.
• Use of a sign that, while not identical, is sufficiently similar to cause a likelihood of confusion among the public.
• Use of an identical or similar sign for different goods or services when the registered trademark has a reputation, and the use without consent takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.

Prohibition of Infringing Acts

To protect the rights of trademark holders, they may request the prohibition of specific acts by third parties. These acts include:

• Affixing the sign to products or their packaging.
• Offering, marketing, or holding products for commercial purposes under the sign.
• Importing or exporting products under the sign.
• Using the sign on commercial documents or for advertising.
• Using the sign as a trade name or part of a trade name.

Protecting Trademarks in International Trade

Trademark holders have the right to prevent the introduction of products bearing an identical or similar mark from third countries into commerce without authorization. This right applies even if the products are not released for free circulation in the country. The holder’s right is extinguished if, during infringement proceedings, it is proven that the trademark holder cannot prohibit the products from being placed on the market in the final destination country.

Obligation to Use the Trademark

In infringement actions, the trademark holder must prove the genuine use of the trademark in the five years preceding the action. If the trademark has been used only for part of the goods or services for which it is registered, it will be considered registered only for those goods or services. The holder cannot prohibit the use of a later-registered trademark if it cannot be canceled under the applicable legal provisions.

Reproduction of Trademarks in Reference Works

If a trademark is reproduced in a dictionary, encyclopedia, or other reference work, and such reproduction creates the impression that the trademark is a generic term, the publisher must indicate that the trademark is registered at the trademark holder’s request.

Exhaustion of Trademark Rights

Trademark rights are exhausted when products are placed on the market in the European Union and the European Economic Area by the holder or with their consent. The holder cannot prohibit further commercialization of the products, except when there are legitimate reasons, such as a change or deterioration in the condition of the products.

Use of Trademarks by Third Parties

The trademark holder cannot prohibit a third party from using their own name or address, descriptive signs, or the trademark for indicating the intended purpose of a product or service, provided the use is in accordance with honest practices in industrial or commercial matters.