Imagine you have invested a lot of time and energy in building up your company and your brand. Suddenly you find out that a competitor or another person has registered "your" trademark for themselves. This can not only be frustrating, but also damaging to your business. In the worst case scenario, the person may even want to prohibit you from selling your products. But don't worry: trademark law offers you various ways to defend yourself against such situations.

The priority principle in trademark law

In trademark law, the so-called strict priority principle, often referred to as the "first-come, first-served principle", applies. This states that the first person to apply for a trademark generally has the exclusive right to this trademark. This means that in the event of a collision between two trademark rights, the older right generally takes precedence.

The German Patent and Trade Mark Office (DPMA) or the European Union Intellectual Property Office (EUIPO) do not check whether similar or identical trade marks already exist when a trade mark is applied for. It is the applicant's responsibility to carry out a comprehensive trademark search before filing the application to ensure that no earlier rights are infringed. It can therefore happen that, despite the priority principle, a younger trademark is registered that conflicts with an older one. However, it can also happen that someone, knowing about the success of your trademark, registers precisely this trademark in order to harm you, to blackmail you or to "ditch" your success.

If you discover that your trademark has been registered by a third party, you should act quickly. If you do not take decisive action against the application, a court will, in case of doubt, order you to cease and desist and will not even listen to your good arguments.

Options for taking action against an unlawful trademark application

If you discover that a third party has registered "your" trademark, there are several legal steps you can consider:

Contradiction against the trademark registration

After publication of the registration of a trademark in the Trademark Bulletin, owners of earlier rights have three months to Objection to the registration because of older rights. This opposition can be based not only on trademarks that have already been registered, but also on older company names or other commercially used designations that are established as an indication of origin for your company. If your company name and the name of your goods are identical, you can proceed on the basis of the older company name.

The opposition procedure examines whether there is a likelihood of confusion and whether your already used trademarks enjoy an earlier priority. If the opposition is successful, the later trademark application can be canceled.

Application for Explanation invalidity due to bad faith

A trademark application is considered to be filed in bad faith if the applicant pursued unfair intentions at the time of filing. This is the case, for example, if he applies for the trademark solely to make it more difficult for you to use it or to profit from your good reputation. In such cases, you can file an application with the DPMA or the EUIPO. Application for a declaration of invalidity of the trademark place. It is important to note that bad faith must be proven with appropriate evidence, which often requires a detailed examination of the circumstances.

Warning from the company logo

A company trademark, such as your company name or sometimes your logo, enjoys protection from the time it is used in business transactions. If a third party registers a trademark that is identical or similar to your trademark and applies to similar goods or services, you may consider this to be an infringement of your rights. In such cases, you can use the Warning to applicants and request him to withdraw the application and submit a cease-and-desist declaration with penalty clause to give away. This is to prevent future injuries and to protect your rights. We consider this to be the best option as you will be fully reimbursed in the end.

Risk of first infringement in case of trademark application without use

The mere registration of a trademark, even without its use, can give rise to a so-called risk of first infringement. This means that the serious intention to use the sign in the course of business is presumed by the application alone, which may constitute an imminent infringement of your trademark rights.

In such cases, you can take preventive action against the applicant in order to prevent any future infringement of your rights. A warning letter can be an effective means of persuading the applicant to withdraw the application and issue a cease-and-desist declaration.

Risk of repetition due to actual use

As soon as the registered trademark is used in the course of trade, the Risk of repetition. This describes the reasonable assumption that an infringement that has already been committed may be committed again. In trademark law, it is automatically assumed that a single act of infringement could be repeated unless the infringer takes measures to the contrary, such as submitting a cease-and-desist declaration with a penalty clause.

Warning letter vs. opposition proceedings or nullity proceedings

An opposition against the registration of a trademark at the DPMA is a formal procedure aimed at preventing the registration of a trademark. However, the opposition does not have a suspensive effect and does not automatically eliminate the risk of first occurrence created by the application. It may therefore make sense to issue a warning in parallel with the objection or instead. One advantage of the warning letter is that it is aimed directly at stopping the use of the trademark and can therefore have an immediate effect.

On the other hand, courts are often prepared to stay infringement proceedings against your use of your own trademark in ongoing proceedings against the trademark application until a decision has been made on the opposition or nullity application.

Conclusion

The registration of a trademark can already pose a serious threat to existing trademark rights. Both the resulting risk of first infringement and a possible risk of repetition in the event of actual use provide sufficient grounds for a warning. A warning letter can often be more effective than a pure objection procedure, as it is aimed directly at stopping the use and can therefore offer protection more quickly. It is therefore advisable to immediately check and, if necessary, take legal action if you become aware of a potential trademark infringement.

Have you discovered that someone has registered "your" trademark? Then contact a specialist lawyer for intellectual property rights immediately. We will be happy to advise you on your matter. Our initial assessment is free of charge. You can reach us by e-mail at kanzlei@marken.legalby telephone at 02131/4051650 or via our Contact form.