Coexisting Trademarks: How EU and National Trademark Systems Work Side by Side

The European Union trademark system and the national trademark systems of EU Member States coexist rather than compete. The same brand can be protected simultaneously as an EU trademark (EUTM) and as a national trademark in one or all Member States. When conflicts arise between EU and national rights, no system automatically prevails: the resolution turns on the priority principle. This guide explains the framework under Regulation 2017/1001 (the current EU Trademark Regulation), the Italian Industrial Property Code (D.Lgs. 30/2005), and the practical implications for brand owners building cross-border portfolios.

For the broader IP framework, see our master pillar guide to copyright law in Italy and Europe. For comprehensive brand identity legal protection, see our brand identity guide.

The coexistence principle

The EU trademark system, governed by Regulation 2017/1001 of the European Parliament and Council on the European Union trade mark (the current EUTMR), provides a single registration that covers all 27 EU Member States uniformly. National trademark systems, harmonised but not unified by the Trade Mark Directive 2015/2436, provide separate registrations valid only within the relevant Member State.

The two systems coexist on a principle of parallel validity: the same proprietor can hold an EUTM and one or more national trademarks for identical signs. Different proprietors can hold an EUTM and earlier national rights covering similar signs, provided the geographic and substantive conditions are met.

Crucially, the EUTMR explicitly recognises the relevance of national rights. National rights — including registered and unregistered trademarks, designations of origin, geographical indications, and other earlier rights — can block EU trademark applications, even though the EU system has its own complete examination framework.

The priority rule

The resolution of conflicts between EU and national rights operates through the priority principle: prior tempore, potior iure (earlier in time, stronger in right). The earlier-acquired right — whether national or EU — prevails over the later one in the territory where the earlier right is valid.

Practical consequences:

• An earlier Italian trademark can block registration of a later EUTM covering the same or similar sign for the same or similar goods/services;
• An earlier EUTM can block registration of a later Italian trademark on parallel grounds;
• Each system has its own opposition procedure for blocking the later application;
• Invalidity actions can be brought against already-granted registrations on the same grounds, with longer time limits.

For trademark owners building cross-border portfolios, this means careful coordination across EU and national filings is essential.

Earlier rights that can block an EUTM

Under Article 8 EUTMR, multiple categories of earlier rights can found an opposition to an EUTM application:

• Article 8(1)(a) and (b): earlier identical or similar trademarks for identical or similar goods/services, where there is likelihood of confusion — the standard ground analysed in our Mr. Kebab vs Mister Kebap case study;
• Article 8(2): defines “earlier trademarks” broadly to include EUTMs, national trademarks, international registrations designating EU or Member States, and other categories;
• Article 8(4): earlier non-registered trademarks or other signs used in trade, protected under EU or national law, of more than mere local significance;
• Article 8(4a): earlier designations of origin or geographical indications protected under EU or national law;
• Article 8(5): earlier trademarks with reputation, where the later mark would take unfair advantage of or be detrimental to the earlier mark’s distinctive character or reputation, even for different goods/services;
• Article 8(6): agent or representative trademarks improperly registered.

For genuine use requirements on earlier marks, see our Lambretta trademark case. For posthumous trademark issues, see our Yoko Ono v. John Lemon case study.

Designations of origin and geographical indications

A particularly important category for Italian brand owners: protected designations of origin (PDO) and protected geographical indications (PGI). Under Article 8(4a) EUTMR, an EUTM application is refused where:

• An application for a PDO or PGI was already submitted under EU or national law before the EUTM filing date;
• The PDO or PGI confers the right to prohibit use of a subsequent trademark;
• The opposition is brought by an authorised party.

For Italy, this matters substantially. PDO and PGI registrations covering Italian agricultural and food products (Parmigiano Reggiano, Prosciutto di Parma, Chianti, Aceto Balsamico di Modena, Mozzarella di Bufala Campana, and many others) provide robust protection against trademark applications that would conflict with the protected designation. Italian PDO/PGI holders can oppose EUTM applications across the entire EU, not only in Italy.

The framework is harmonised through Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs and parallel regulations for wines and spirits.

Italian implementation

Italian trademark law operates through:

• Italian Industrial Property Code (D.Lgs. 30/2005), particularly Articles 1-28 on trademarks;
• Article 12 CPI: requirements for protectability, including earlier rights barriers;
• Article 20 CPI: trademark protection scope and infringement framework;
• UIBM (Italian Patent and Trademark Office): handles national trademark filings, examinations, and opposition procedures;
• Italian implementation of the Trade Mark Directive 2015/2436 through subsequent amendments to D.Lgs. 30/2005.

For Italian brand owners, the practical reality is parallel filing: EUTM filing through EUIPO for pan-European protection, plus selective Italian national filings where the brand has particular Italian relevance (e.g., regional Italian heritage brands, brands building Italian market presence before EU expansion).

EUTM, national, or both: the strategic choice

For trademark owners, the choice among filing strategies depends on:

• Geographic scope: where the brand actually operates or plans to operate;
• Cost: EUTM filing is more expensive than single national filing, but cheaper than multiple national filings across EU;
• Risk profile: an EUTM can be invalidated centrally on any earlier national right anywhere in the EU; national trademarks face risk only locally;
• Genuine use: EUTM genuine use requirements look at use anywhere in the EU; national trademarks require use in the specific Member State;
• Conversion: failed EUTM applications can be converted to national filings in selected Member States, preserving priority date.

For most international brands, the optimal strategy is a core EUTM plus strategic national filings in key markets where the brand has particular local relevance or where additional protection layers add value.

Coexistence agreements in practice

When conflicting rights exist (whether between EUTM and national, or between two national trademarks), parties often resolve through coexistence agreements:

• Contractual arrangements defining how each party will use its respective marks;
• Geographic limitations (e.g., one party uses only in northern Italy, another only in southern Italy);
• Goods/services limitations (e.g., one party uses only for food, another only for beverages);
• Distinctive element commitments (e.g., one party always uses additional graphic elements);
• Mutual recognition with no-challenge clauses.

Coexistence agreements provide a practical alternative to litigation but require careful drafting to ensure enforceability and to avoid genericide or trademark dilution risks.

How DANDI supports trademark owners

DANDI.media supports Italian and international trademark owners on EU and Italian trademark strategy:

• EUTM filings through EUIPO and Italian national filings through UIBM;
• Pre-filing trademark clearance and freedom-to-operate searches;
• Opposition strategy at EUIPO and UIBM;
• Invalidity actions and defence;
• PDO/PGI conflicts and food/wine brand strategy;
• Coexistence agreement drafting and negotiation;
• Portfolio audit across EU and national systems;
• Cross-border enforcement and litigation.

For consultation, book directly with Avv. Claudia Roggero or Avv. Donato Di Pelino.

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