Matthias Rößler - 26. September 2022

Prevent trademark infringement

Trademark owners should continuously monitor trademark registers with regard to new trademark registrations, because the Trademark Office does not protect you from third parties applying for a trademark that is similar or identical. Trademark monitoring serves in particular as a tool to identify potential infringement of your trademark at an early stage.

No trademark search with examination of similarity ex officio

The databases of the GPTO, EUIPO and WIPO contain all trademarks applied for and registered. However, when applying for a new trademark, these trademark offices do not check ex officio whether similar or identical trademarks are already registered in the register.

This can lead to third parties applying for a trademark that is similar or identical to one's own trademark.

Regular monitoring of trademark registers

Continuous trademark monitoring can ensure that applications for similar or identical third-party trademarks are detected at an early stage. Since trademarks are generally subject to a compulsory use, infringement of your existing trademark can be countered in good time.

In principle, the trademark owner himself can carry out the verification whether similar or identical trademarks have been applied for or registered in the register.

However, it should be noted that the monitoring of the registers is time-consuming and complex. As a trademark owner of a German trademark, for example, not only German trademarks, but also EU trademarks and internationally registered trademarks with scope of protection for Germany must be monitored. As a trademark owner of an EU trademark, all national trademarks of the EU must also be monitored.

Trademark monitoring often leads to many similar trademark applications, so that a trademark law analysis is often required as to whether or with what success action could be taken against it - accompanying this monitoring with a lawyer is therefore advantageous.

Keep an eye on newly filed trademarks

As part of a professional search, our trademark experts search the databases of the trademark registers as well as fee-based databases for trademark monitoring.

  • All new trademarks or trademark applications filed with the national and international trademark offices are constantly monitored.
  • A search is made for identical trademarks (identity search).
  • A search is conducted for trademarks in which word elements, spelling or a figurative element are similar (similarity search).
  • The classes of goods and services are examined.

Trademark monitoring makes it possible to take timely action if it becomes apparent that there is a significant risk of confusion with your trademark.

Our trademark experts support you in ensuring sustainable trademark protection. The costs of a trademark monitoring are manageable. Feel free to contact us.

Proceeding upon detection of an unwanted trademark registration

If it is determined that a younger trademark overlaps and/or impairs the scope of protection of your trademark, an opposition can be filed in many cases, for which the trademark owner only has three months after the publication of the younger trademark. For the opposition proceedings, the monitoring measures taken and the search report must be fully documented.

Usually, before the opposition proceedings are conducted, you will be given sufficient time to reach an off-the-record agreement with the other trademark applicant. In this way, it can be achieved that the other trademark applicant limits its scope of protection and/or that its use of the trademark is restricted. This can be recorded in writing in a so-called delimitation agreement. If such an agreement is reached before the start of the opposition proceedings, you will even receive your official opposition fee back.

If the objection deadline is missed, a potentially complex deletion procedure can be initiated. Civil action (injunctive relief, compensation for damages) is also possible.

Regarding Matthias Rößler:

Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.

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