Similar trademark filed: how to respond?
Opposition, invalidity, cease-and-desist, monitoring: the remedies available when a similar mark is filed.
Your trademark is now registered and you are beginning to use it commercially. You discover that a third party has filed a mark that resembles yours. Action is needed to prevent your mark from losing its value.
Regular monitoring of the INPI and EUIPO databases is useful but may not be sufficient: phonetic or spelling variations can be missed. Monitoring weekly publications in the BOPI, filings by competitors and domain name registrations provides additional coverage.
The first step is always to contact the applicant, ideally by formal cease-and-desist letter (mise en demeure). This presents your prior rights and requests withdrawal of the application or amendment of the sign or the goods and services covered. This phase allows a quick assessment of whether an amicable solution is possible. It is advisable to send the letter promptly after publication, so that opposition proceedings remain available if needed.
Publication of the application opens a two-month window to file an opposition with the INPI. Opposition is a fast, non-judicial procedure (see the opposition procedure guide). The owner of the earlier mark demonstrates identity or likelihood of confusion. The applicant may respond. The INPI issues a draft decision. An amicable settlement is possible at any stage. The INPI must rule within six months. An appeal is available.
If the opposition window has closed and the mark is already registered, invalidity proceedings remain available. This route is longer, more costly and subject to the uncertainties of litigation. If the third-party mark has been registered for more than five years and was filed in good faith, invalidity cannot be obtained. For the relationship between trademarks and trade names, see the article on trademarks and trade names. For the filing process, see the trademark filing guide and the intellectual property services page.
Trademark monitoring is essential to protect your investment. Acting promptly — cease-and-desist, opposition, or invalidity as a last resort — limits the impact of third-party filings. If you are facing this situation, book a call.
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