Legal advice in case of disputes

Our legal counsels will always start with making a proper assessment of the situation in question, together with you. Questions that will be relevant in making this assessment are for example: “what’s the conflict about?”, “what are your concerns?” and: “how important is the counterparty?”. We will subsequently assess if we can reach an agreement with the counterparty by negotiation. Needless to say, we will look after your interests in all negotiations. Should this approach not give the desired results, we will then start the applicable procedures with the relevant public organizations. In many cases there are special arrangements or the option of arbitration to fall back on. The benefit of these arrangements is that they are often faster and less expensive than going to court. The latter can however unfortunately not always be avoided; sometimes interference by a judge is simply necessary. 

Legal advice in case of trademark infringement

Trademark infringement can basically occur in the following 2 ways:

  • another party uses your trademark or tradename;
  • another party applies for a trademark that is identical or similar to your trademark for the same or similar products and/or services as your trademark.

When you allow an infringing trademark to co-exist with your own trademark for 5 years (in other words: when you don’t take action against such infringing trademark), you lose the right to take action against this trademark in the future. Your trademark is then exposed to decrease or loss of value. It is therefore very important to immediately take action against any possible infringers. 

The opposition procedure (which is mostly a purely administrative procedure) consists of 2 phases:

Phase 1 of the opposition procedure

In the first phase, the so-called ‘cooling off’ phase, we will try to reach an amicable settlement with the infringer. After we have established the suspected trademark infringement, the infringer will receive a cease and desist letter. In this letter, we will illustrate why there is a trademark infringement. We will urgently request the infringer to (for example) change the products or services for which his trademark was applied for, or to withdraw the trademark.

Phase 2 of the opposition procedure

If the conflict is not solved after the cease and desist letter and the following correspondence and negotiations with the infringer, we will start the formal opposition procedure with the applicable public trademark authority. Both the trademark holder and the infringer will have the opportunity to substantiate and provide evidence. The opposer will have to convince the public trademark authority that there is a genuine risk of confusion of the public.

The decision of the public trademark authority

In the second phase of the opposition procedure, the public trademark authority will make a decision. This decision making is bound to strict guidelines. For example: the authority will presume the information in the trademark register is the correct data of the trademarks involved to take into account. If the public trademark authority rules in favour of the opposing party, the opposed trademark cannot be registered. If the public trademark authority rules against the opposing party, the opposed trademark will be registered.

Why is trademark watch so important?

European trademark authorities will not inhibit new trademark applications that conflict with existing trademarks. This is up to ‘the market’. In other words: the trademark holder needs to keep an eye on any possible infringers of his trademark himself. Furthermore, the submission of objection against a trademark application is subject to a deadline. And the trademark holder needs to also keep an eye on this deadline himself. 

With our watch service we will take these burdens out of your hands. If we signal a trademark application that is a potential risk, we will immediately notify you. This way we can take action fast and in time. 

Subscribe to our watch service now!

An accurate watch is very important for the optimal protection of your trademark. This is why we offer (in principle) a free first year watch subscription for every new trademark. You can choose to start the watch service at any moment: with the application of the trademark, during the registration procedure or after the registration of the trademark.

Please call 076 – 514 84 03 or send an email to: info@merkecht.nl.

Ask your question

Are you dealing with a conflict or is your trademark being misused? We are here to help! How can we be of service?