Opposition proceedings at the trademark offices. Monitoring and enforcement of rights, also in court.
We will monitor your trademarks. If another trademark application collides with your trademark we will file an opposition for you and conduct the opposition proceedings, be it at the national level at the DPMA or at the European level at the EUIPO. We are well-versed in the proceedings.
Depending on the strategy and desired impact, we will also defend your trademarks in court – whether by bringing an action for declaration of invalidity or for revocation, or by filing a motion for a preliminary injunction or defending your rights in the main proceedings. We are familiar with the individual practices of the competent specialised divisions. So that your trademarks remain a sharp sword in the future.
Professional brand monitoring: security for your brands
After registration, we take care of your trademark rights – whether it is an individual trademark or a large trademark portfolio. We set up a continuous trademark monitoring system for you.
This allows us to keep an eye on the relevant trademark registers. If someone else applies for an identical or similar trademark, we will inform you about it. We will help you to decide whether it is worthwhile to take action against it.
- Legal trademark monitoring – these are the reasons
- Official opposition at the Trade Mark Office
- Outsourcing brand monitoring – what you can expect
- Trade mark conflict: What can be done besides filing an opposition?
Legal trademark monitoring – these are the reasons
Your registered trademark is not only infringed by identical trademark applications or trademark registrations of third parties, but also by only similar applications or registrations.
The only condition is in such a case that there is a likelihood of confusion. If you do not take action here, this is detrimental to you as the trademark owner from several points of view.
On the one hand, you have to expect that customers will not buy your product or service, but the one bearing your competitor’s trademark.
On the other hand, the protection of your trademark is weakened by any similar registered trademark.
If a trademark owner does not defend his trademark, this can even lead to a complete loss of his trademark right.
Official opposition at the Trade Mark Office
If a competitor applies for a new trademark that is in conflict with your application, you will only have a short period of time to file an official opposition.
For a German trademark application the opposition period is 3 months, for international trademark applications the opposition period is sometimes even shorter. If you miss the opposition period, you will lose the opportunity to stop the application during the official registration procedure.
This results in only more complex and costly proceedings, such as the legal action for cancellation.
The solution is consistent trademark monitoring.
Only by monitoring the collision professionally you can be sure that you are aware of all applications or registrations not only of identical, but also of merely similar trademarks.
Without this monitoring you will miss the chance to react in time, cost effectively and still in the official registration process.
Outsourcing brand monitoring – what you can expect
As specialists in trademark law, we provide you with maximum service and maximum security with the trademark monitoring we offer:
Thorough similarity search
While it is relatively easy to detect identical trademark applications, this is different for similar trademarks. For example, the words “Skate” and “Sk8” are spelt quite differently, but pronounced identically in English.
We use the best computer algorithms on the market to detect all similar trademarks from every point of view.
As soon as we discover a similar trademark application or registration, you will receive a corresponding warning with a report from us. You can then file an opposition in due time.
Some trademark applications or registrations collide so strongly with your trademark that there is no alternative to filing an opposition. In some cases, the circumstances of the individual case may also argue against filing an opposition.
We help you to make the right decision not only from a legal point of view but also from a business perspective.
Trade mark conflict: What can be done besides filing an opposition?
If a third party applies for a trade mark which is in conflict with your earlier trade mark, there is always the risk that he will not wait for the opposition period to expire but will use his trade mark before the opposition period expires.
The official opposition procedure is directed only against the entry of the trademark in the register.
A claim for injunction cannot be enforced in opposition proceedings. However, even without commencement of use, the mere application for or registration of a conflicting younger trademark usually constitutes a risk of first infringement, which you can defend yourself against with a warning notice (“cease and desist warning”).
If the third party does not react appropriately to this by signing a cease and desist declaration, possibly together with withdrawal of the application, you can obtain an interim injunction in court or take legal action.
We help you to choose the right means of defence and use our expertise to protect your trademark rights.
More questions or do you wand help with professional brand monitoring?
Then call us in Cologne at +49 (0)221 7888600 or in Berlin under +49 (0)30 802087030 or write us an e-mail.
Image source reference: Preillumination SeTh | Unsplash