Recent Developments in the Protection of Trademarks and Trade Names in the European Union : From Conflict to Coexistence?

While Article 8 of the Paris Convention mandates the protection of trade names independently of their entitlement to protection as trademarks, European law has traditionally offered only limited and uneven protection. This article examines the heightened protection of trade names within the European Union - a legal development set in motion by the decision of the WTO Appellate Body to include trade names as a separate category of intellectual property under the TRIPS Agreement and supported by recent jurisprudence of the European Court of Justice (ECJ) concerning the capacity of trademark owners to prevent unauthorized third-party use of identical or similar trade names. The discussion focuses on the scope of the plaintiff's trademark rights in relation to trade names and the extent to which European law may allow the defendant's trade name overlapping and coexisting rights with those of a trademark. In conclusion, the author advises a cautious approach to the adjudication of conflicts concerning trademarks and trade names to include a more exhaustive analysis of the legitimacy of the trade name owner's commercial practice in adopting a company name, and the potential impact of the trade name owner's use on the trademark at issue