Trademark Watch School 3 of 3 – The risk with trademark likelihood of confusion

This is the last 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 newsletter, we will deepen the problems revolving EU-trademarks, as well as explain the problems revolving trademarks that are likely to be mistaken for each other. You can read the first lesson here and the second one here.

Continuing the discussion about the problems concerning EU-trademarks

As mentioned in the previous lesson, community trademarks  - which enable the applicant to register a trademark for the whole of the EU and where the responsibility for protecting one’s exclusivity lies with the trademark holders – have caused a lot of problems. Not only for trademark holders with community trademarks, but also trademark holders with business and trademark rights in just one country. This is because the efficiency, both in terms of time and money, that a community trademark application in the EU gives you, has resulted in many trademark applicants being prone to choose an EU trademark application, despite not being active in any other country than their own.

A common scenario is this: We have two companies from two different EU countries. The companies have identical or confusingly similar trademarks. Company number 1 is proactive and wants to ensure the success of their potential international expansion. Company number 1 therefore registers an EU trademark. The result is that when company number 2 finally wants to start exporting their products to a third EU country, they cannot do that without infringing on company number 1’s trademark. The risk of fines is one thing, but the main thing is the inability to use one’s trademark in any other EU country than one’s own. It is basically painting oneself into a corner.

The likelihood of confusion

Up until now, we have almost only addressed the clash between community trademarks and national trademarks. As important is the need to watch national trademark applications where a (potentially) more thorough examination is carried out. Even if the likelihood of confusion is a factor in the examination for national trademark applications in a country that is included in your existing community trademark, what is to say that the administrator of the application makes the same assessment as you do? As a rule, it is you, the trademark holder, that is the best judge of what is likely to be confused with your trademark, and what is not. Therefore, it is important to enable yourself to oppose trademark applications that could pose a threat to your exclusivity. That is what 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!