Registration of a trademark similar or identical to mine, what recourse?
How to react when a trademark similar to yours is filed or used by a third-party?
Your trademark is now registered and you start operating it. What is your surprise when you notice that a new competitor has just filed a trademark application that is similar to yours?
This third party may be simply neglectful, or, unfortunately, malevolent. In any case, it is necessary to act in order to avoid that your brand loses its value and that you are criticized for having been too passive in its defense.
There are many ways to respond to this discovery: tools, both pre-litigation and litigation, can help you enforce acquired rights by registering your trademark.
Establish regular monitoring of the databases of INPI And of The European Union Intellectual Property Office is a useful strategy but may not be sufficient. Indeed, this monitoring is by nature limited to terms that are the same or very similar (for example, changes in agreement or the modification of a single syllable). The most daring phonetic or spelling variations can easily be missed.
It is also possible to monitor the publications of trademark applications on a weekly basis at Official Intellectual Property Bulletin in order to be informed of all new deposits that could impact you.
In general, it is useful to monitor trademark registrations made by your competitors, as well as domain name registrations on Whois databases, which may suggest a subsequent trademark application.
In any case, it is advisable to set up such monitoring on a regular basis, in order to be able to react as soon as possible if it proves useful.
When you identify a trademark application that may infringe your rights, the first step is always the same: you should contact the applicant.
This may be a first informal contact, by telephone or email, especially if this third party seems to you to be acting in good faith, but it is preferable to send a formal notice, to constitute proof of your steps.
The purpose of this application will be to present your previous rights to the applicant, who may have simply been negligent in his analysis of the trademarks available on your common market, and then to request the withdrawal of the trademark application, or, where appropriate, the modification of the term used or the products and services in question.
This formal notice phase is useful as it will quickly allow you to assess the probability of succeeding in finding an amicable solution or, conversely, of preparing a potential litigation outcome.
It is interesting to send the formal notice quickly after publication, in order to then be able to consider an opposition if this first letter is not sufficient to put an end to the trouble.
The French procedure will be considered here, for example. In fact, the Community procedure, although similar in principle, is more complex.
The publication of the trademark application opens a period of two months during which it is possible, for the owner of a previously registered or registered trademark, or for the owner of a well-known trademark, to oppose the registration of the trademark with the INPI.
Opposition is a simple procedure that takes place in two or even three steps (see our guide):
It is of course possible for the parties to reach an amicable agreement during this period of opposition. In this case, the INPI may relinquish the opposition at the request of the parties.
The INPI has a period of six months to transmit a final decision to the parties. In the absence of a response, it is rejected.
If the opposition is considered to be well-founded, the trademark application is automatically terminated.
However, it will be possible to file an appeal with the Geographically competent Court of Appeal.
Unluckily, you don't realize the existence of the brand until too late. It is already registered and you no longer have the possibility to file an objection.
Of course, there is still the possibility of finding an amicable solution, but the third party is probably already exploiting its brand and will often be less open to such an outcome.
One last way remains open: nullity. However, it will be longer, more expensive and is accompanied by the vagaries of legal proceedings.
However, it should be noted that if the third party trademark has existed for more than five years, and if it had been registered in good faith, the invalidity cannot be accepted by the courts.
The criteria for the invalidity of a trademark are, logically, the opposite of the validity criteria:
If the invalidity is retained, the trademark registration will be cancelled retroactively, and therefore deemed never to have existed.
The registration and then the development of a brand is a real investment that it is natural to want to protect and see fruitful.
Monitoring trademark registrations will allow you to exploit yours in a serene manner, and to limit the impact of unscrupulous competitors.
What classes, and products/services should be included in a trademark for a mobile application?
The transfer clause in SaaS agremeent is a trap: a customer should not be able to prohibit an important operation for the SaaS company. How should it be drafted?
Let's build together to grow your business
I have been supporting software and SaaS companies for more than 10 years, to structure their business, protect their intellectual property and improve their contracts.
