Trademark monitoring

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Why Trademark Monitoring?

Trademark law is an exclusive right. This means that as the owner of your trademark, you are entitled to prevent any other party from using your trademark in commercial transactions. This is the only way to effectively combat confusion and reputational damage.

Every day, hundreds of new trademark applications are filed with trademark offices across the EU. However, these new trademarks are not checked for the existence of older, similar, or even identical trademarks. The responsibility for identifying new, confusingly similar trademarks lies with the owner of the older trademark. Therefore, regular professional monitoring of your trademark is essential to effectively enforce the rights derived from trademark protection. Without continuous monitoring, there is a serious risk that infringements will remain undetected for years. An infringement can result in considerable financial disadvantages, for instance, if someone operates commercially under your brand name and within your business sector. Furthermore, if your trademark is not regularly checked for and protected against “Trittbrettfahrern” (free riders), the rights derived from trademark law may be forfeited. Claims arising from trademark infringement expire after 3 years, after which there is no longer any entitlement to injunctive relief or damages. Consequently, if the market is not regularly searched, this can lead to a dilution of your trademark. Trademark monitoring is therefore not a luxury, but a necessity to maintain the integrity of your trademark and preserve its long-term value.

As part of our monitoring package, we verify whether identical or confusingly similar trademarks have been registered and whether identical company names are being entered. Should an identical trademark be identified, we will proactively intervene and issue a corresponding demand letter for the cancellation or restriction of said trademark. If a similar sign is found, further steps will be determined in consultation with you, following a discussion of the factual and legal circumstances.

Rechtsanwalt Peter Harlander Peter Harlander
Harlander & Partner Rechtsanwälte „Es gilt der Grundsatz der Priorität: Die ältere Marke hat Vorrang gegenüber der jüngeren Marke. Der Zeitpunkt Ihrer Markenanmeldung ist also entscheidend um festzustellen, ob eine Kollision zwischen den Marken besteht und ob rechtliche Schritte eingeleitet werden können.”“
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Scope of Engagement

Trademark monitoring involves an internal search conducted every two months across all relevant trademark and company registers. This search identifies all new identical, partially identical, and similar trademarks, as well as new identical company names. Furthermore, the renewal of your trademark and its expiration date are monitored. Should an identical or partially identical trademark be applied for, proactive measures will be taken against it through a demand letter.

Rechtsanwalt Peter Harlander Peter Harlander
Harlander & Partner Rechtsanwälte „Sollte dadurch nicht das gewünschte Ergebnis erreicht werden, werden wie die weitere Vorgehensweise gemeinsam mit Ihnen herausarbeiten“

Options include drafting a trademark delimitation agreement with the opposing party, filing an opposition against the trademark application, or submitting an application for cancellation for an already registered trademark. In the case of similar trademarks, the course of action will be discussed and determined with you during a video conference, based on the degree of likelihood of confusion.

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Search

The search is conducted every two months and involves reviewing all relevant registers. To identify any confusingly similar trademarks, the respective trademark registers are consulted, depending on the trademark’s geographical scope of protection. For instance, for an Austrian trademark, the Austrian trademark register is searched (which includes not only Austrian but also EU and international trademarks); for an EU trademark, the EU trademark register and all national trademark registers within the EU are searched. Regarding company names, the respective company registers are also searched. It should be noted that when searching for identical company names outside the EU, our firm can only guarantee a trademark-related search, not a search of the relevant company registers.

Scenario 1: No Identical or Similar Trademarks or Company Names are Found

If the search does not yield any identical or similar trademarks or company names, no further action will be taken. The internal search will be concluded and repeated in two months.

Scenario 2: Discovery of an (Partially) Identical Trademark

Should our search identify a (partially) identical trademark associated with identical or similar goods and/or services, we will proactively issue a demand letter to the relevant trademark owner. The objective of this demand letter may be the restriction or complete withdrawal of the infringing trademark application. The demand letter includes a cease and desist declaration and an undertaking to restrict or cancel the trademark as requested, and to refrain from further commercial use.

If this objective cannot be achieved through amicable settlement, the next step to consider is filing an opposition. As an opposition must be filed within three months of the trademark application’s publication, it may be prudent in certain cases to file an opposition during ongoing negotiations to meet the deadline and demonstrate the seriousness of intent to the opposing party. Should a settlement be reached later, the opposition can be withdrawn within the cooling-off period.

In many cases, settlement involves negotiating and concluding trademark delimitation agreements or coexistence agreements. Such an agreement is particularly beneficial when the use of an identical trademark by the two opposing trademark owners does not in any way prejudice them in commercial transactions.

Rechtsanwalt Peter Harlander Peter Harlander
Harlander & Partner Rechtsanwälte „In diesen Fällen liegt zwar aus markenrechtlicher Sicht eine Verwechselungsgefahr vor, tatsächlich liegt eine solche im geschäftlichen Verkehr aber nicht vor. Wenn sich beide Unternehmen grundsätzlich einig sind, dass in Wahrheit keine Verwechselung am Markt zu befürchten ist, kann eine Markenabgrenzungsvereinbarung Zeit und Kosten sparen und trotzdem zum gewünschten Ergebnis führen.“

Under the trademark delimitation agreement, the two trademark owners stipulate that they will not operate in each other’s business sector for a specified period.

If the identical trademark is already registered, we will file the required application for cancellation.

Scenario 3: Discovery of a Similar Trademark

If the discovered trademark is similar and pertains to identical or similar goods and/or services, we will inform you about the trademark and discuss all further steps with you.

Options also include a corresponding demand letter, filing an opposition, drafting a trademark delimitation agreement, or submitting an application for cancellation.

Scenario 4: Discovery of an Identical Company

Should our search identify an identical company, we will proactively send a demand letter, including a cease and desist declaration, to the legal owner. The objective of this approach is to ensure that the company does not (or no longer) appear or operate in connection with your goods and services.

Subsequently, a delimitation agreement may be considered after consultation with you.

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Demand Letter

A demand letter aims to swiftly and efficiently mitigate the risk posed by a confusingly similar trademark. A demand letter contains various demands addressed to the opposing party. These include the request to cease using the trademark for the corresponding conflicting (similar and identical) goods and services, as well as the rectification of the unlawful situation, for instance, by destroying goods bearing the infringing trademark. Additional claims may encompass remuneration, damages, profit, as well as accounting, disclosure of information, and publication of judgment.

The demand letter is typically accompanied by a cease and desist declaration and an undertaking. By signing this, the opposing party commits to refraining from the unlawful use of the trademark to the described extent, under penalty. Furthermore, it may include an obligation to restrict or withdraw a trademark application. Other considerations include the destruction of already produced printed materials bearing the logo and disclosure of profits generated.

The demand letter sets a deadline for the opposing party to undertake the requested actions, sign the cease and desist declaration, and make payment for legal intervention. Should the opposing party fail to respond within the stipulated period, we will contact you to discuss further steps.

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Trademark Delimitation Agreement

Companies often possess distinct strengths and target markets. A trademark delimitation agreement can ensure that each company can address its specific niche without being in direct competition.

A trademark delimitation agreement, also known as a coexistence agreement, is a legal arrangement between two companies that use or intend to use similar or identical trademarks. In such a (potential) conflict situation, a trademark delimitation agreement can offer a pragmatic solution, facilitating an amicable and mutually satisfactory resolution of the trademark dispute. This civil law contract regulates the trademark use of a sign by the owners of two confusingly similar trademarks. Typically, a trademark delimitation agreement entails the unilateral restriction of goods and/or services for the junior trademark, or the precise definition of use for both trademarks, and further includes essential provisions for any legal successors, jurisdiction, and applicable law. Moreover, clear trademark delimitation can ensure that customers accurately differentiate between the products or services of the two companies.

Overall, a trademark delimitation agreement provides a pragmatic solution for many trademark disputes. By establishing clear rules and boundaries, it can prevent conflicts, safeguard your investments, and simultaneously enable both affected parties to operate successfully in their respective markets.

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Opposition

Owners of an older trademark or their representatives may file an opposition within three months of the application of a new trademark with the competent trademark office. A successful opposition results in the affected trademark not being registered or its registration being retroactively revoked. An opposition can be filed due to a likelihood of confusion, or on the basis of an older well-known trademark, or an appellation of origin or geographical indication.

The opposition procedure varies somewhat depending on the competent trademark office. However, it has been largely harmonized within the EU legal framework. The period during which owners of older trademarks can challenge a new registration is three months from the trademark’s publication. While an EU trademark is only registered after this period, national German and Austrian trademarks are registered earlier; however, a successful opposition can retroactively invalidate such a registration. Opposition proceedings are adversarial. They commence with a “cooling-off” period, intended to facilitate an agreement between both parties. If successful, previously paid opposition fees may be reimbursed. Should no agreement be reached, the office’s official decision on the opposition will follow after an exchange of pleadings.

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Application for Cancellation

In cases of trademark infringement, a cancellation proceeding can be initiated against a trademark via an application for cancellation. The distinction from an opposition is that an application for cancellation targets an already registered trademark after the opposition period has expired. The application must be submitted to the competent office.

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When is a Trademark Confusingly Similar?

Claims arising from trademark law may be asserted against (partially) identical and similar trademarks. The most frequent basis for action against a trademark is the presence of a likelihood of confusion. A likelihood of confusion arises when the average consumer presumes that two independent trademarks originate from the same or economically linked enterprises (e.g., sub-companies). Furthermore, a likelihood of confusion exists if consumers cannot distinguish between two trademarks at all due to their identity or similarity, perceiving them as one and the same trademark.

To ascertain a likelihood of confusion, both the signs and the relevant goods and services must exhibit similarity. The guiding principle is: the more similar the signs, the less similar the goods and services need to be, and vice versa. The decisive criteria for determining the respective similarity of signs differ based on the type of trademark. For word marks, graphic, phonetic, and conceptual similarities are pertinent.

Rechtsanwalt Peter Harlander Peter Harlander
Harlander & Partner Rechtsanwälte „Bei Bildmarken wird sowohl die bildliche Gestaltung als auch der Bedeutungsgehalt der Marke herangezogen. Wird die Verwechslungsgefahr von zwei Wortbildmarken geprüft, dann fließen die Kriterien der Wort- und Bildmarke zusammen. Verwechslungsgefahr wurde etwa zwischen den Marken „Caratwo“ und „Carado“ oder „FLORAMED“ und „MEDIFLOR“ angenommen.“
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Disbursements

Disbursements are financial outlays made by our firm to third parties. These encompass various payments. Disbursements include, for instance, court fees or official fees. Official fees also cover the fees for an opposition and for an application for cancellation. These amounts vary depending on the competent office.

Official Fees

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