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Intellectual Property, Trade marks, Uncategorized
What action can I take against trademark filings that cause confusion with my trademark?
A strong trademark registration is essential when another party starts to use or attempts to register a trademark which can cause confusion with your brandidentity. It is essential in such a case that you take the relevant actions. In this blog we discuss the possible action a trademark holder can undertake when confronted with a brand which could potentially cause confusion.
It is important to first get a good view of your position and the possible actions available to you before you make a move. You dont want to find out after sending a cease and desist letter that it is going to hit you in the face. For advice and counseling in these situations you can contact us. We can also act on your behalf if you want.
Trademark Watch
Lets start with the option; better prevented than cured. If you have a trademark registration it is advisable to activate a watch on your trademark. With a trademark watch subscription you will be kept up to date with trademark filings which are similar to yours. You can decide based on the trademark filed if there might be a risk of confusion. Because you are alerted to a filing of a new trademark, you can take timely action and use the opposition period connected to the new trademark application. Most often this is a more (cost) efficient way of taking action then when you only take action after registration is completed and the product/service is on the market.
Complain with the trademark holder
A first step is often to contact the person or company that applied for the confusingly similar registration to make your objections known. Before contacting the third party you must prepare your arguments with legal basis as to why their trademark is not valid and should be completely or partially withdrawn. Usually after this complaint a period of negotiations follows to try and find a solution amicably. The filing of opposition with official authorities can then sometimes be prevented.
File opposition with the official trademark authorities
If you do not (timely) reach a resolution with the third party, you can file an opposition with the competent trademark authoriy, such as the Benelux Office for Intellectual Property (BOIP), or the European office; the European Intellectual Property Office (EUIPO). In order to file an opposition it is essential that this is completed within the opposition period. In the case of a Benelux registration the oppositionperiod is 2 months from the date on which the application of the trademark to which you object was published. After the cooling off period, both parties are given the opportunity to file their arguments. The BOIP will then judge both sides of the case and make a decision. In case the opposition is succesfull, the opposed trademark application will not be registered.
Consider taking legal steps
If case the official period for filing opposition has already lapsed, you still have the option of contesting the trademark registration at Court or at the Trademark Authority (BOIP or EUIPO). However, if the contested trademark has already been registered it is usually harder to find an amicable solution between the parties. Early intervention therefor is preferable.
In brief
The protection of your brand with a trademark registration is of vital importance and taking action against trademark applications which can cause confusion is necessary to maintain your brand identity. It is advisable to always seek professional councel of a certified trademark attorney to determine the best strategy based on your specific situation. A trademark attorney can guide you in negotiations but also represent you at the different official trademark authorities.
If you want to find out how we can register your trademark for you? Or do you think soemong filed a trademark which can cause confusion with yours? Feel free to contact us with your questions.
Photo by Olga Kobruseva on Pexels.com
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