You have registered your trademark. Now, all at once, someone wants to register a trademark that appears to be similar to yours – and, what’s more, for the same products and services. Don't worry! Everything you can do we have listed for you here.
To find out whether anyone wants to register a ‘similar’ trademark, you have to keep an eye on the BOIP Trademarks Register yourself.
You can do that with BOIP Trademark Alert – the online notification service – or you can outsource the monitoring to an IP professional.
You can file an opposition to the new trademark with BOIP within 2 months.
There is a charge for the opposition procedure. Make sure you are well-informed so you know whether you can afford to pay the costs.
Registering a trademark is the first step. After that, it is important to monitor your trademark. One way you can do this, for instance, is by subscribing to BOIP Trademark Alert – the online notification service. You will then receive notification if someone wants to register a trademark that is similar to yours. However, if you would rather not monitor your trademark yourself, you can outsource it to an IP professional.
Assess on a case-by-case basis
First of all: with a new trademark application that appears similar to yours, it is not always the case that there is infringement. BOIP Trademark Alert may well notify you, but it is then up to you to make an assessment on a case-by-case basis. What is important is whether the trademark as a whole is similar to your own trademark.
You want to do something about the trademark
Perhaps you feel that the new trademark looks too much like yours. There are two things you can do: leave it that way or file an opposition. Of course, if you are seriously working on building your brand, then it might be sensible to do something about it. That does not necessarily mean you have to start an ‘opposition procedure’. You can also try to reach a mutually acceptable agreement with the other party.
The opposition procedure with BOIP
If you are unable to find a solution that is mutually acceptable, you can start an opposition procedure against the new trademark application with BOIP. You must do this within two months of the other trademark being published. An opposition procedure is a legal process. Prior to taking any such action, it may be prudent to contact an IP professional for support and advice. They can assist and advise you.
The opposition procedure costs € 1,045. This is the amount that the opposing party has to pay if you win the case in full. If you lose the case, you also have to pay this amount to the opposing party. You will therefore have to pay 2x € 1,045 plus any costs for the services of an IP professional.
Please note: Even if you win the case, it can cost you money.
You should also take into account that the new trademark can be withdrawn during the opposition process. That is good news for you because the trademark will not be registered, and you succeed in upholding your rights. However, even if there is no decision rendered, you still pay approximately half the costs of the opposition procedure, for which there is no reimbursement.
Take action quickly
If you want to take action against another trademark, don’t wait too long. Maybe the trademark owner has not invested a great deal yet. The earlier you signal to the other party that you intend to block the trademark, the less the resistance is likely to be. BOIP Trademark Alert helps you with this. You receive notification immediately, so you can also react quickly.
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