Looking after your rights
Pursuant to Article 9 EUTMR, 'the registration of an EU trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using the same sign in the course of trade for the same goods and/or services for which it is registered(...)'
Enforcing your trade mark is as important as brand building. If you don't do it, the validity of your mark may be questioned and your brand will lose value.
You are responsible for enforcing your registered trade mark. To do this effectively you must do the following:
- Ensure your trade mark is correctly registered for the goods and services you trade in.
- Be vigilant. A registered trade mark will warn competitors that you have a right but if someone uses your trade mark, or one like it, without permission, it's up to you to take action to stop them.
EUIPO is responsible for registering EU trade marks and Community designs.
EUIPO is not an enforcement agency, so we cannot provide legal advice on enforcing trade marks or designs.
The registers
Make sure no one tries to protect an identical or similar trade mark.
Search trade mark registers for trade mark applications or registrations that are identical or similar to yours.
We offer a search tool for EU trade mark applications and registrations called eSearch plus. Registered users can configure automatic watch alerts and receive a notification whenever potentially conflicting trade mark applications are received at the Office.
TMview is a global trade mark search tool that provides first hand data about trade marks from approximately 60 intellectual property offices, including all the EU national and regional intellectual property offices. Access over 40 million trade marks online, available for free at www.tmdn.org
If you are unable to conduct your own searches, professional trade mark watching services are provided by legal professionals.
If you discover a competitor has applied to register, or has registered, a mark that is similar or identical to your own, you can enforce your earlier right and oppose or cancel the trade mark registration.
The market
Ensure nobody uses your trade mark in the market.
Monitor the marketplace by checking the press, trade publications and the web for companies using your trade mark without authorisation. It may be that illegal copies of your products are on sale or that competitors are using marks that are similar, but not identical, to your EU trade mark.
The EUIPO has been working with a number of e commerce marketplaces to gather information on their IP protection tools to make it easier for you to take action and use the resources they make available. You can find more information here
Consider making an application for infringement protection with your national customs authority. Border control officers use these databases to highlight potential infringements and seize counterfeit goods.
You can also enter information about your products and brands into the IP Enforcement Portal. This is a portal intended to help enforcement authorities to recognise counterfeit goods. It is free of charge and you can enter information such as packaging, labels or contact details. This information is then used by enforcement authorities to differentiate counterfeit goods from authentic ones.
It's up to you to take action.
At EUIPO and national registries
Oppose an application or cancel a registration for identical or similar trade marks.
Opposition
As soon as your EU trade mark application has a filing date you can oppose EU and national registrations in the European Union filed after that date.
To protect your rights make regular searches for EU trade mark applications and national registrations and look online for evidence from the marketplace. Trade mark attorneys and monitoring services can help you by conducting searches and providing advice.
Cancellation
Registered EU and national trade marks in the European Union can be cancelled. If you think an existing registration has not been used even though it is subject to the use requirement you can request that it be revoked. If you think an existing registration conflicts with your earlier right, or if you think a registration is invalid, you can request that it be invalidated. As an alternative to invalidating an EUTM a proprietor may request its assignment in their favour if it was registered in the name of its agent or representative without its authorisation.
A request for cancellation costs €630. Invalidity makes the trade mark invalid with retroactive effect (it removes it altogether from the Register of trade marks), and revocation applies as from the date the request is made to the Office.
In the courts and in business
Act against the infringer
We advise you to contact a legal practitioner before taking any action in a dispute.
Inform the alleged infringer – 'Cease and desist' letters
Once an infringement has been detected, consider sending a 'cease and desist letter', informing your competitor about the conflict. This makes your competitor officially aware of your rights and lets them know that if they continue to disregard your rights they might face further action.
Negotiate
In some cases you may be able to negotiate a settlement through mediation and arbitration. These services are suited to disputes between legitimate businesses where both sides are looking for cost-effective and practical solutions.
Civil law measures
If your attempts to warn or negotiate with the alleged infringer fail, there are other legal measures available to combat infringements such as preliminary injunctions and precautionary seizures to prevent illegal use of your trade mark. In all cases, enforcement action under civil law must be brought at national level in the relevant EU jurisdictions. However, one advantage of the EU trade mark is that one court is competent to order such a measure in all Member States.
Criminal law measures
Measures under criminal law apply when counterfeiting and piracy activities are involved. You will need to contact national enforcement and prosecution authorities in the relevant EU jurisdiction.
Please note that criminal law enforcement rules for intellectual property have not been harmonised in the European Union. Enforcement actions under criminal law are brought at national level using the relevant national law. As a result, the options available at European level for criminal law enforcement vary considerably and it is not always possible to apply criminal law enforcement measures in the same way in every country.
If you are asked to prove the existence of your EU trade mark in court proceedings you can obtain an uncertified or certified copy of your registration using eSearch plus or from the Inspection of file online form.