Trademark Watch School 2 of 3 – Trademark conflicts and lost exclusivity in the EU

This is the second out of three lessons in our campaign to raise awareness about the importance of protecting one’s trademarks in order to avoid business critical risks. In this lesson, we will deepen and exemplifying the discussion of the first lesson, which you can read here.

There is a common misconception that registering a trademark is enough for ensuring a long-lasting exclusivity for the name, figure or whatever you chose to protect. However, without a trademark watch it can prove difficult, or even impossible, to protect that exclusivity.

The EU conundrum

In the olden days, trademarks were merely ”national”. Trademarks were applied for and registered in individual countries. With the aim of simplifying the process for trademark holders, a number of initiatives have been carried out in order to easier get a comprehensive international protection. One example is the possibility of designating a registered trademark to other countries through WIPO. Another are the so-called “community” trademarks in the EU. These initiatives are the best examples of why a trademark watch is needed.

When you first started to be able to register community trademarks for the whole of the EU, instead of registering trademarks in individual countries, a sudden (and hardly surprising) problem arose.

When a trademark application is submitted to PRV (The Swedish Patent and Registration Office) for example, they will review both the “distinctiveness” of the application (meaning that an application for a brand of sugar cannot be “sugar”) and the “risk of confusion” with other previously registered rights such as trademarks, company names etc.

Being able to apply for a trademark for 28 countries means that the review cannot be as extensive as one carried out by a national office. This is because the review would have to be about 28 times more extensive, and many, many times more complex than the one carried out by PRV for example. In the case of the EU trademark, it is the “risk of confusion” that has sacrificed. EUIPO (the European Union Intellectual Property Office) has instead put the responsibility of safeguarding ones interests on the trademark holders.

Therefore, an application is generally not compared to potential previously registered rights in individual EU-countries, or even previously registered EU trademarks. EUIPO ensures that the trademark has distinctiveness and publish the application so potential oppositions from trademark holders can be submitted. In order to do that, you need to be aware of when an application that can threaten the exclusivity of your trademark is submitted, that is what a trademark watch is for!

If you have any questions on the monitoring of trademarks, or any other trademark related questions for that matter, just contact us today!