What if, one day, you discover that your own brand is already “taken” in a market where you are planning to expand?

This is precisely the kind of issue a comprehensive trademark search is designed to identify before entering a new market.

A similar situation arose for the US restaurant chain Wendy’s when it sought to re-enter the Benelux market.

What happened to Wendy’s?

Wendy’s is one of the largest American fast-food restaurant chains. As of the end of 2025, it operated nearly 7,400 restaurants, with systemwide restaurant sales of approximately $14 billion. Yet even the scale of the brand did not allow the company to return to a market it had once left without facing significant legal obstacles.

Between 1980 and 1986, Wendy’s operated seven restaurants in the Netherlands, Belgium and Luxembourg. However, the financial performance of these operations did not meet the company’s expectations, and Wendy’s eventually withdrew from the Benelux market.

In 1988, entrepreneur Raymond Warrens opened a small snack bar in Goes, the Netherlands, and named it Wendy’s after his daughter. In 1995, he registered the name as a Benelux trademark.

When the US-based Wendy’s sought to return to the Benelux market in 2000, it discovered that its own name was already legally protected by a local business.

Attempts to remove that right and regain the ability to use its own brand in the region became the subject of years of litigation, which continues to this day.

At first glance, the Wendy’s story may seem exceptional. In fact, it illustrates one of the fundamental principles of trademark law: global brand recognition does not, by itself, guarantee the ability to freely use and register a trademark in every individual jurisdiction.

Even if a company has used a particular mark worldwide for decades, a third party may hold an earlier right in a specific market, creating a genuine barrier to market entry. A properly conducted trademark search can help identify such risks.

Genuine use: when a local trademark is more than just a register entry

It is important to note that this was not a typical case of a “trademark troll” deliberately registering a well-known brand without any intention of using it. The local entrepreneur did not merely register the Wendy’s name — he actually used it in his business. This became an important factor in the subsequent dispute.

In particular, the US-based Wendy’s sought to challenge the local trademark on the grounds of insufficient use. In trademark law, this relates to the concept of “genuine use” — actual commercial use of a trademark in accordance with its essential function, namely to identify and promote the relevant goods or services in the marketplace.

However, in one of the most recent court decisions concerning the matter — the judgment of the Court of Appeal in ’s-Hertogenbosch, No. 200.218.715_02, dated 2 November 2021 — the court concluded that genuine use of the mark in relation to restaurant services had been established.

The Wendy’s mark:

  • was displayed on the windows and façade of the snack bar;
  • was incorporated into the logo and interior of the establishment;
  • appeared on work clothing, packaging and other materials associated with the business.

The court also took into account the characteristics of the Dutch market. Fast-food services in the Netherlands were still largely provided by small local snack bars rather than chain establishments. Against this background, Warrens’ business could be considered a perfectly typical example of a local fast-food establishment.

As a result, the local business was able to retain its rights to the Wendy’s trademark in relation to the relevant restaurant services in the Benelux.

The decision is particularly interesting from a professional perspective because it demonstrates that the assessment of genuine use is not simply a matter of counting the number of business locations or measuring the geographical scope of use. The nature of the relevant market, the manner in which the mark is used and the genuine commercial nature of that use may all be relevant.

The Wendy’s story highlights an important point: a global brand may face difficulties not because of obvious trademark squatting, but because of an existing and genuinely used local trademark right.

Why is checking the trademark register alone not enough?

Before entering a new market, it is not enough to ask a single question: “Is there an identical trademark registered there?”

A much more important question is whether the mark can be safely used and obtain legal protection in the particular jurisdiction where the business intends to operate.

This requires more than a formal trademark register search. A comprehensive analysis may cover:

  1. Identical marks: whether trademarks featuring the same designation exist in the relevant jurisdiction.
  2. Similar marks: whether there are trademarks whose similarity could create a risk of refusal or claims by third-party rights holders.
  3. Earlier rights: who owns them, when they arose and whether they have priority in the relevant jurisdiction.
  4. Goods and services: which goods and services are covered by the relevant rights and to what extent they overlap with the business’s activities.
  5. Alternative forms of the brand: whether localized, translated, transliterated or other versions of the designation are being used.
  6. Other potential rights and restrictions: depending on the jurisdiction and the specific characteristics of the brand.

This is why the absence of an identical trademark in the register does not necessarily mean that there is no legal risk. The analysis should take into account not only registered trademarks, but also the way rights arise and acquire priority in the particular country.

It is not only about third-party trademarks: can the mark itself be registered?

Even if a search reveals no identical or similar third-party trademarks, this does not necessarily mean that the mark will be eligible for registration.

The reason is that there are “absolute grounds for refusal” — restrictions that concern the mark itself rather than a conflict with a particular rights holder. The applicable grounds and assessment criteria vary from one jurisdiction to another.

Typical risks include:

  • Lack of distinctiveness. A trademark must enable consumers to distinguish the goods or services of one business from those of other businesses. If a designation is too simple or consists solely of elements that cannot, in themselves, perform this function, registration may be refused.
  • Descriptiveness. A trademark should not merely describe the goods or their characteristics. For example, a designation that directly indicates the type, composition, quality, quantity, intended purpose or other characteristics of a product may be refused trademark protection.
  • Deceptiveness. A designation should not create a misleading impression about the goods or services. For example, if a name suggests a particular geographical origin, composition or characteristic that the goods do not actually have, this may constitute grounds for refusal.
  • Other statutory restrictions. Depending on the jurisdiction, additional grounds for refusal may apply based on the nature of the designation or its individual elements. For example, legislation may prohibit the registration of marks that are offensive, contrary to public policy or otherwise prohibited.

Therefore, assessing the prospects of registration also requires consideration of the legislation and examination practice of the relevant trademark office in the particular jurisdiction.

A high-quality comprehensive search should therefore address two levels of risk:

  • earlier rights held by third parties;
  • whether the mark itself meets the registrability requirements of the relevant jurisdiction.

Ultimately, the business does not simply need a list of trademarks identified in a database. It needs an answer to a much more important practical question: does the brand have a realistic prospect of being safely used and legally protected in the jurisdiction where the business plans to launch it?

What can a mistake cost?

A problem identified before a brand launch usually gives a business an opportunity to change course with relatively limited losses.

The same problem discovered after substantial investments have already been made can have very different consequences:

  • negotiations with the rights holder;
  • acquisition of a third party’s trademark;
  • renaming and rebranding;
  • revision of the marketing strategy;
  • replacement of packaging, signage and other materials;
  • litigation;
  • restrictions on the use of the brand;
  • postponement or even abandonment of market entry.

The Wendy’s story demonstrates that even a major international brand is not immune to these risks.

Conclusion

A preliminary trademark search is not a formality before filing an application. It is a business risk management tool.

Conducting such a search allows a business to identify identical and similar third-party marks before entering a market, assess potential conflicts with earlier rights, take the specifics of the relevant jurisdiction into account, and determine whether the mark itself may be subject to absolute grounds for refusal.

For international businesses, this analysis is particularly important because the same brand name may have a completely different legal status from one jurisdiction to another.

That is why a comprehensive preliminary search should not be viewed merely as a cost of trademark registration, but as an investment in predictability.

Author: Mykhailo Liashenko