August 18, 2022
An (Irish) Road Less Travelled
An (Irish) Road Less Travelled

It’s well-known that EU trade mark applications may be opposed on the basis of prior trade mark rights registered at the EUIPO, or at national level within an EU member state.  But it is also possible to prevent the registration of an EU trade mark on the basis of unregistered rights in a member state where there is a legal basis for such action. 


Vision Direct Group Ltd., successfully employed this strategy to oppose an EU trade mark application in respect of various pharmaceutical goods.  The opposition was based on the non-registered word trade mark (under Irish law) ‘EVERCLEAR’, with respect to which the opponent invoked Article 8(4) EUTMR.    The contested mark was a figurative mark, including the words EVER CLEAN +.


Conditions for Success


To succeed in an EU Opposition based on non-registered marks, an Opponent must:


  • Submit evidence to show ownership of the earlier mark or sign prior to the filing of the contested trade mark, in respect of the goods or services of the contested trade mark;


  • Show that the earlier mark or sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;


  • Prove that it may prohibit the use of a subsequent trade mark, by reference to the wording of the provisions of the national law on which it bases its case, adducing official publications of the relevant provisions or jurisprudence and


  • Show that the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.


These conditions are cumulative, so if the Opponent fails to satisfy any one of those conditions, an opposition based on a non-registered signs within the meaning of Article 8(4) EUTMR cannot succeed.


An EverClear Example of good practice!


In the EVERCLEAR case, Vision Direct provided a witness statement supported by:

  • Website images demonstrating use of the mark in the course of trade on contact lenses, eye drops and optical solutions for some years prior to the application date of the contested mark.
  • Evidence of web traffic to the website
  • Details of the orders fulfilled, including excerpts from sales databases showing sales across Ireland, and returning customers, which proved an established position on the respective market.
  • Turnover figures relevant for the sale in Ireland of EVERCLEAR products in Ireland over five years prior to the EU application.


The Opposition Division adduced from this evidence that the opponent put the earlier sign to use in the course of trade of more than local significance in Ireland for contact lenses, contact lens cleaning solution, eye drops before the filing date of the contested trade mark.


Vision Direct referred to the Section 10(4)(a) of the Trade Marks Act 1996 of Ireland, which underpins the rights acquired by unregistered trade marks which have established goodwill and allows for their protection from ‘passing off’.


The Opposition Division adduced that the evidence submitted proved that goodwill had attached to the earlier mark. To consider whether there would be a misrepresentation, it carried out the standard comparison of both goods and signs, concluding some similarity with almost all of the applied-for goods, and sufficient similarity between the marks that it would be likely that, seeing the contested sign, consumers would be misled to believe that these are goods of the opponent. Finally, it considered the possibility of damage and in the absence of any evidence to the contrary, concluded that the ‘classic trinity’ test conditions had been met, and that the arguments made under Article 8(4) EUTMR should succeed.


Why is this an under-used opportunity?


Close cultural and trading relationships exist between the UK and its neighbour.   Ireland was the UK’s fourth largest export market in 2021, accounting for goods and services worth £41.3 billion.


Prior to Brexit, UK unregistered rights were often relied upon in this manner. Trade in Ireland can offer a parallel opportunity going forward for brand holders.  It may have been a road less travelled heretofore, but now both registered and unregistered rights in Ireland could present UK brand owners with extra footholds in EU brand protection.





Ireland’s trade mark practices, though similar, are not identical to UK practices in all respects (for example, trade mark applications are subjected to both absolute and relative grounds examinations at the Intellectual Property Office of Ireland). Tailored advice and local support on Irish trade mark disputes is available at Stobbs via our office in Dublin, Ireland.

Trademarks /  Brexit /  Disputes /  Pharma

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