Once you become aware of a potential infringement of your sign, then you have to assess the nature and the possible consequences of that infringement.
This can be done through the following steps:
1. You first
Above all, understand your right – become familiar with the territory in which your trade mark is registered, its registration number, the next renewal date, what your trade mark is composed of and what (goods/services) your trade mark was registered for.
2. Then, the potential infringer
Next, you need to understand the sign being used by the potential infringer and how they’re using it. Does the potential infringer have a valid trade mark of their own?
How similar is the sign the potential infringer is using to your registered trade mark? How similar are the goods/services the potential infringer is using the sign for to the ones covered by your trade mark? Is this use being made in the course of trade?
3. Last but not least, describe what type of infringement you are suffering
Finally, you need to understand what exactly is going on: is it a trade mark infringement? Is it a product infringement? Have you ensured that the potential infringer has not acquired the product through legitimate sources? Have you had a previous commercial relationship with the infringer?
Once it becomes clear that an infringement is likely to be happening, it is good practice to notify the alleged infringer with a “cease and desist” letter. This kind of letter asserts the prior right, brings the action that is likely to constitute an infringement to the attention of the alleged infringer and sets out a desired outcome.
Sometimes these letters are enough to reach an amicable solution; at other times the only way to reach your desired outcome will be to file a lawsuit.
Below are some examples of other potential infringement situations and our advice on how to handle them:
Practical tips
Someone is trying to register a similar trade mark within the relevant territory
This is not an infringement per se, however it will still need to be dealt with as it may dilute the distinctiveness of your sign. Your initial options here would be to send a letter requesting the application to be withdrawn, and/or file an opposition/cancellation action.
An opposition is an administrative action filed before the relevant intellectual property office to prevent a trade mark from being granted. In the European Union, the relevant authority – the European Union Intellectual Property Office (EUIPO) – reviews all trade mark applications to assess whether they comply with the legal requirements. This assessment does not take into account previously applied for or registered identical or similar trade marks. It is the trade mark owner’s responsibility to monitor the market and the published database. You can do this by subscribing to a trade mark watch service provided by your IP lawyer’s office.
If a trade mark application is deemed to comply with all the legal requirements, it is then published in the official European Union trade mark bulletin. This publication marks the beginning of a three-month opposition period.
If for some reason you miss the deadline for filing an opposition against an identical or similar trade mark, then your last resort for avoiding the coexistence of that mark with your previously registered one is to submit a cancellation action, which is also an administrative action filed before the relevant intellectual property office. A cancellation action is similar to an opposition, but it is filed after registration of the conflicting trade mark and is more expensive.
Both opposition and cancellation decisions can be appealed, first administratively and then judicially.
The objective here is to avoid the coexistence of your trade mark with a similar or identical trade mark, in order to avoid confusion in the marketplace and loss of market share.
Someone is using your sign without authorisation
As stated above, the first rule to remember anytime you discover a third party using your trade mark without authorisation is to assess the strength of your right before doing anything else. (Which are the distinctive elements? Is there a dominant element? Are there non-distinctive elements in the sign? Is your right still valid? Has it been in use in that particular territory? How similar to your trade mark is the sign the potential infringer is using?)
e.g. EUTM: 017970522 (below)
It is also fundamental to assess the nature and the gravity of the infringement before reacting.
For instance, if you spot counterfeiting activity on social media, another platform such as an online marketplace, or a search engine (e.g. Google keywords), you may want to consider reporting the infringement directly to the service provider and requesting its immediate removal. Most providers of social media platforms, marketplaces, advertisements, etc. have established procedures for such cases.
When it is clear that an infringement is being committed consciously, the use of a warning letter is inefficient as the infringers already know that they are infringing your right. Moreover, sometimes you cannot even identify the infringer to be able to send the letter to them; for better or for worse, the internet allows people to remain anonymous if they want to. Therefore, your defence strategy must always be tailored to the specific case and type of infringement: what may work in the physical world, in your own country, may be totally worthless on the internet and vice versa.
Lastly, if you are looking for monetary compensation, the only way to do that is to file a lawsuit before the competent court.
