[Part 7 of our Brand Rights blog series]

Exclusive rights to a trademark can arise not only through registration but in some cases also through the trademark's establishment, although the requirements for establishment are very strict in practice. Our brand rights experts Jani Kaulo and Maria Puronvarsi remind brand owners that registration should always be the primary means of protecting a trademark.

An exclusive right to a trademark arises not only through registration, but sometimes also through establishment, if the trademark has become generally known among traders and consumers or clients in the field. This typically happens only after years of systematic and extensive use of the trademark. The assessment of an established trademark is always done on a case-by-case basis.

The legal effects of establishment are the same as those of registration, but the requirements for establishment are nevertheless very strict in practice. Very few trademarks are considered established.

The status of an established trademark must be proven

Establishment of a trademark can be demonstrated in various ways, such as through statistics, market research, marketing materials and evidence of the use of the trademark in business. It is important for the trademark holder to ensure proper collection and archiving of this information and materials.

Market research can demonstrate the awareness of a trademark and the extent of its use in a specific market area. Statistics can indicate, for example, the volume of use of the trademark or its visibility in the market. Direct consumer surveys can help determine how well-known and trusted a trademark is among consumers. Positive customer feedback and recommendations can indicate an established brand name with a strong customer base.

Examples of the trademark's use in various marketing materials, such as advertisements, packaging materials, or products, can serve as evidence of its use and recognition. Certificates, such as awards or industry recognition, can reinforce the value and establishment of the trademark.

Proving the establishment of a trademark is uncertain

Competitors' behavior and reactions can also provide clues as to how established a trademark is. For example, companies may attempt to exploit an established trademark by imitating it or challenging it legally.

"Proving establishment can be particularly difficult in dispute situations, even if evidence of use has been archived. This makes establishment a very uncertain protection method, especially for internationally used brand names. The prerequisites for establishment vary from country to country, which increases legal risks and challenges. At the EU level, for example, establishment is not possible at all, but registration is the only way to get exclusive rights to a trademark," says our brand rights expert Maria Puronvarsi, who has extensive experience in infringements and disputes related to trademarks.

According to case law, evidence of a trademark's establishment may include advertisements, product packaging, sales figures, assessments of resources used in advertising, and newspaper articles. A commonly used method to demonstrate establishment is to refer to a comprehensive market research conducted by a professional and impartial entity.

"The evaluation of a trademark's establishment is a comprehensive assessment, taking into account all relevant factors, including the duration and scope of use of the mark. The evaluation is very strict. Often, evidence considered sufficient by the brand owner does not demonstrate to the Court that the mark has become established as a trademark," says Maria Puronvarsi.

Even if the establishment of a trademark can be proven, achieving evidence material alone is not enough. It is important to continuously monitor and maintain the establishment of the trademark. This includes active marketing, offering high-quality products and services, and allocating legal resources for potential disputes.

The risk of infringement increases if a trademark is not registered

Established trademarks that have not been registered do not appear in public registers and are generally not discovered in competitors’ trademark searches. Therefore, trademarks relying on establishment only may go unnoticed by competitors. On the other hand, the threshold for consciously exploiting another's unregistered trademarks is also lower.

"In practice, it’s easier to apply for a trademark registration and use the gathered data and other evidence material to demonstrate active use of the mark in the target market than to try to prove the mark’s establishment through evidence in dispute situations," says Jani Kaulo, with nearly 20 years of experience in the protection and enforcement of trademarks and brands.

He advises brand owners to choose a more secure method of protecting their brand.

"In addition to ease, registration creates exclusive rights to a trademark more reliably and cost-effectively than attempting to establish it. Therefore, registration should always be the primary means of protecting a trademark," says Jani Kaulo.

Do you need expert help in protecting your trademark on the international market? Contact us!

Book a complimentary consultation

Brand Rights Experts-Maria Puronvarsi-Jani Kaulo

Maria Puronvarsimaria.puronvarsi@kaulopartners.fi+358 40 669 0527
Jani Kaulojani.kaulo@kaulopartners.fi+358 40 637 5442

Read more

What does trademark distinctiveness mean and why is it important? [Part 6 of our Brand Rights Blog Series]

Protecting your trademark through registration [Part 5 of our Brand Rights blog series]

Trademark is the core of brand rights [Part 4 of our Brand Rights blog series]

Company name is not sufficient brand protection in international markets [Part 3 of our Brand Rights blog series]

Brand rights into brand value [Part 2 of our Brand Rights blog series]

 Brand elements into brand rights [Part 1 of our Brand Rights blog series]