A third party may object to your trademark or you may object to someone else’s brand. In both cases, it is important to resolve the issue as efficiently as possible.
In some cases, it is wise to settle the case rather than to incur high costs for long legal procedures. In other cases it is best not to give in and go to court.
Several routes are possible, from sending a cease & desist letter and filing an opposition to legal proceedings before court. In the latter case, we work with specialized lawyers. Based on our experience we will always give you the right advice on how to act!
It is possible to object in cases of identical or similar trademarks for identical or similar goods and / or services.
No, this is not mandatory. However, when the use of a brand by a third party has been tolerated for five years, you lose your rights to make any objections. This can be annoying if you are ‘burdened’ by the third party’s brand in the future.
An opposition is the procedure for objecting to a trademark This happens at the Trademark Office where the trademarks are registered. This Office will decide whether the marks are confusingly similar.
In an opposition, the losing party is ordered to pay part of the costs. In case of legal proceedings, an award of costs will be ordered. If you win, the other party will be ordered to pay the costs. However, in case of loss you will be ordered to pay the costs.
Eric is partner in Bakker & Verkuijl. He is a specialist in brand protection for more than 30 years and has extensive experience in EU and international procedures. Eric is a BMM Certified Trademark Attorney.
Astrid is founder and co-owner of Bakker & Verkuijl. She is a specialist in brand and design protection for more than 25 years and a BMM Certified Trademark Attorney.
In addition to trademark and design protection Adri also focuses on domain names. Adri is co-owner of Bakker & Verkuijl and a BMM Certified Trademark Attorney.
