Trademark monitoring & trademark protection
Permanent trademark and brand protection through systematic trademark monitoring
The registration of a trademark with the relevant trademark offices forms the basis for the protection of a trademark. However, for a permanent brand protection this alone is not enough, as the trademark offices generally do NOT check whether the trademark infringes on already registered property rights when a trademark application is filed. In concrete terms, this means for trademark owners that similar or identical trademarks can also be legally registered in the trademark register without any official obstacles. To prevent this, it is essential to continuously monitor the own trademark after it has been successfully applied for or registered in the trademark register.
In the so-called trademark monitoring, which is also a market observation, the relevant trademark registers and business registers are regularly searched for identical or similar, new trademark applications or newly registered companies, as well as optionally also the Internet for identical or similar use of trademarks. Possible trademark infringements by third parties can thus be identified at an early stage and costly legal disputes can be prevented. If, during such trademark monitoring, it is discovered in good time that a younger trademark has been registered in the trademark register, which poses a likelihood of confusion with your own, older trademark, an opposition proceeding or invalidity proceeding can be filed against the registration of the new trademark at the respective trademark office.
As expert lawyers for intellectual property we have the necessary experience and expertise to effectively monitor your trademark and to protect you from the possible consequences of a trademark infringement. If there is a potential risk of confusion with your trademark due to a newly registered trademark we will of course also assist you with further legal action after a thorough examination and initiate the appropriate countermeasures for you in order to your trademark rights.
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Why is continuous trademark monitoring important?
At the German Patent and Trade Mark Office (DPMA) alone, more than 6,000 trademarks are registered every month. In addition, numerous European and international trademark registrations are filed at the European Union Intellectual Property Office (EUIPO) or the World Intellectual Property Organization (WIPO). As the trademark offices do not check older trademark rights when registering a trademark, there is a high risk for every trademark owner that sooner or later a similar or even identical trademark will be registered in the trademark register. If this occurs, two confusingly similar trademarks will coexist – the earlier mark becomes diluted and loses value as the identification of the trademark with a specific product or service is no longer possible. This can mean not only that years of costly advertising measures have been in vain, but also possible quality deficits on the part of the imitator can lead to the loss of customers, suppliers and investors.
However, such consequences of trademark infringements can be avoided, if it is detected at an early stage that third parties are misusing the rights to a protected trademark. This requires professional trademark monitoring, which continuously checks whether new trademarks have been registered that are identical or similar to the monitored trademark.
A professional trademark monitoring is therefore a important part of brand protection and ensures that a trademark is not used unlawfully. A careful and systematic approach is thereby essential in order to identify potential trademark infringements at an early stage.
How does professional trademark monitoring work?
In theory, every trademark owner could conduct trademark monitoring themselves. However, due to the large number of trademark applications and the multiude sources of information to be checked, this requires a lot of time, attention and resources, as well as an in-depth understanding of trademark law and the relevant markets. For a comprehensive, systematic trademark monitoring, it is therefore advisable to entrust this task to an expert, especially when you are dealing with an extensive trademark portfolio or operating in international markets.
As specialized attorneys for trademark law, we at ab&d Rechtsanwälte have the experience, the know-how and the tools to help you systematically monitor the brand and thus to protect permanently. In the first step, we draw up a list of all the brands you own and define clear criteria that we use to effectively identify potential brand collisions. These can be similarities in the brand name, logo or product categories, for example, which we identify using a professional monitoring software adequately. In order to ensure that potential trademark infringements are detected promptly, trademark monitoring is carried out continuously on the basis of numerous sources of information. In addition to the relevant trademark registers, this also includes commercial registers, social media, online marketplaces, title protection directories or domain registrations, depending on the market and business area.
Of course, we will keep you informed of the current status and the actions taken during the trademark monitoring process. If we identify potential infringements of your trademark rights, we will carefully document and evaluate them and, in consultation with you, take the necessary steps to stop the infringement and protect your rights as the trademark owner. This can range from contacting the imitator to initiating official or judicial proceedings.
How can action be taken against a discovered identical or similar trademark?
Contacting the imitator
If an identical or similar trademark is discovered during trademark monitoring, there are various ways of taking action against the trademark infringement and maintain the protection of the older trademark. However, there is not always malicious intent behind the registration of a similar trademark. Sometimes a trademark conflict can also be traced back to a neglected similarity search by the imitator, which is why it can be strategically advantageous to formally contact the owner of the conflicting trademark first. In doing so, the existing older rights can be politely pointed out and a withdrawal of the trademark application can be requested. However, in the event that the other party does not respond or responds negatively to the request, legal steps should already be prepared in parallel. This primarily includes initiating opposition proceedings at the trademark office if the imitation trademark has only recently been registered.
Opposition proceedings
As a trademark owner, professional and continuous trademark monitoring is not only important in order to become aware of a conflicting trademark application in the first place, but also to be able to file an opposition against at the competent trademark office in a timely manner - this is only possible within the first 3 months after registration (German trademark) or application (EU trademark) of this trademark.
The trademark opposition procedure is a fast and cost-effective legal remedy that prevents the registration of an identical or similar trademark. If an opposition is to be filed against a newly registered trademark, this must be submitted in writing or electronically to the relevant trademark office and a corresponding fee must be paid. Due to the strict formal and substantial requirements, it is always advisable here to use the relevant forms of the respective trademark offices and to attach a notice of opposition. The notice of opposition should contain a statement of grounds with the essential facts and arguments on which the opposition is based (in particular the demonstration of the likelihood of confusion) as well as the indication of evidence supporting this statement of grounds. Although this is only required as a condition of admissibility against an EU trademark at the EUIPO, it is also recommended if an opposition has been filed at the DPMA in order to positively influence the decision of the DPMA.
If the opposition proceeding is admitted, the responsible trademark office will inform the trademark infringer about the filed opposition and a 2-month "cooling-off period" begins, during which the parties have time to reach an amicable agreement - e.g. in the form of a peaceful demarcation or coexistence agreement. If no agreement is reached during this period, the parties involved are mutually given the opportunity to put forward arguments for the protection of the trademark or for its cancellation.
If, after examination, the relevant trademark office finally affirms a likelihood of confusion, this results „for the younger trademark“ in either a partial deletion of the list of goods and services or even the complete deletion of the entire trademark, or the rejection of the trademark application. If, in the opinion of the trademark office, there is no likelihood of confusion, the opposition will be rejected.
Invalidity proceedings and cancellation due to prior rights
If the 3-month opposition period has been missed or if the options mentioned above have been unsuccessful, the registration of a trademark due to existing prior trademark rights can only be declared invalid and cancelled. The so-called invalidity proceeding, which aims to cancel a trademark due to relative grounds for refusal can be initiated in two ways: Either by filing an application for a declaration of invalidity with the DPMA (German trademark) or EUIPO (European Union trademark) (§ Section 53 MarkenG, § 60 UMV), or alternatively by filing a lawsuit before an ordinary court (§ 55 MarkenG).
If the proceedings are initiated by an application for invalidity at the DPMA, this must be filed in writing and the facts and evidence serving as grounds must be stated (Section 53 (1) sentences 1 and 2 MarkenG). The owner of the challenged trademark then has 2 months to file an opposition against this application. If he fails to file an opposition within the time limit, the challenged trademark will be canceled without a substantive examination of the application.
If, however the owner of the conflicting trademark decides to file an opposition against the application for a declaration of invalidity within 2 months, the proceedings will continue before the Trademark Office and will no longer need to be pursued in a court proceeding, as was the case before the revision of the Trademark Act. The fact that invalidity proceedings due to conflicting older rights can now be fully conducted before the German Patent and Trade Mark Office has only been possible since 01.05.2020. The advantage of this new, official procedural alternative for the applicant is generally the shorter duration of the proceeding and the significantly lower costs compared to court proceedings, as no legal action is taken against the owner of the conflicting trademark.
However, the duration of invalidity proceeding can vary and depends on various factors, including the complexity of the case, the workload of the Trademark Office and other circumstances. The official invalidity proceeding is concluded as soon as the Trademark Office has issued a written decision after examining and hearing the involved parties. If the decision is in favor of the applicant, the legal consequence is that the younger trademark is declared invalid and ultimately deleted from the trademark register. If the decision is made against the applicant, the younger trademark remains in force.
Although there is no obligation to retain a lawyer in official proceedings, such as opposition proceedings or invalidity proceedings, it is strongly recommended to be represented by a lawyer specializing in IP law due to the complexity of the relevant legal issues. As an established law firm specialized in intellectual property law, we are very familiar with the intricacies of official proceedings and are happy to assist you with our expert know-how in all phases of the official procedural in order to protect your trademark rights effectively. In addition to reliably assessing the prospects of success and developing a well thought-out strategy, we will of course also file and substantiate the relevant applications for you in a targeted manner and handle all correspondence with the responsible trademark offices.
