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Under European trade mark law, protection is only acquired through registration (Article 6 EUTMR; Article 1 TMD). Whether the mark is actually used or not is of no relevance at this stage: neither is it a requirement for protection, nor does it grant a substantive right under the European Union Trade Mark Regulation (EUTMR) or the Trade Mark Directive (TMD). However, such protection may follow from national law. Member States are free to grant use-based trade mark protection within their jurisdiction, and in a number of them—Austria, Germany, Italy, the Nordic countries, and, in the form of passing off, the United Kingdom—such protection is available under terms that may differ from country to country. The specificities of the legal regime applying to such signs are independent from the provisions in the TMD.

EU trade mark law confers exclusive rights on the proprietor of a registered trade mark. It provides for three general types of protection. Article 9(2) EUTMR and Article 10(2) TMD offer protection against confusion under sub (b) (see paragraph 5.105 et seq.) and protection against dilution under sub (c) (see paragraph 5.182 et seq.). In double identity cases (identical signs used for identical goods or services), sub (a) (see paragraph 5.64 et seq.) provides for ‘absolute’ protection (recital 16 TMD) combining elements of both forms of infringement on the basis of the function theory developed by the Court.

As with other intellectual property rights, the exclusive rights of the trade mark proprietor are limited in several respects. At the international level, Article 17 TRIPS offers room for the adoption of ‘limited exceptions’ in domestic legislation (see paragraphs 2.68–2.72). On this basis, Article 14 of the Trade Mark Directive (TMD) and Article 12 of the European Trade Mark Regulation (EUTMR) provide a tool for reconciling the interests of the trade mark owner with competing interests of other traders and the public at large. As explained by the Court of Justice of the European Union (CJEU), these provisions, by limiting the effects of the exclusive rights of the trade mark owner, seek ‘to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain’.

Harmonized EU trade mark law contains rules on trade marks as objects of property in Articles 16 to 24a of the European Union Trade Mark Regulation (EUTMR) and Articles 22 to 26 of the Trade Mark Directive (TMD). These rules cover transfer and assignment, the possibility of giving trade marks as security and granting rights in rem, the levy of execution, the involvement of EUTMs in insolvency proceedings, and issues of trade mark licensing. The substantive provisions are accompanied by procedural rules concerning the recordal of corresponding legal transactions in the register. While the TMD only guarantees the possibility of registration, the EUTMR contains more detailed registration requirements.

It is a defining feature of ‘ordinary’, individual trade marks that they indicate a single commercial source. Collective marks and certification marks, by contrast, are meant to signify membership in an association, or a particular quality, or compliance with other, specific conditions. Furthermore, while an individual mark’s quality function, that is, consumer expectations with regard to the quality level and the consistency of product characteristics, is in most cases only indirectly protected, meaning that competitors or members of the public cannot request sanctions under trade mark law in case that quality changes occur (see Chapter 7, sections 7.2.3 and 7.6.4.4.2), collective marks and certification marks risk losing their validity when the standards they are meant to indicate are neglected.