What Happens if a Third Party Wants to Register a Trademark Similar to Mine?

What Happens if a Third Party Wants to Register a Trademark Similar to Mine?

Before registering a trademark and making distinctive use of a trade name, it is crucial to conduct a thorough preliminary study of existing trademarks to avoid the misuse of an already registered trademark and, therefore, trademark infringement.

Despite the fact that trademark regulations, both national and European, allow for the coexistence in the market, with their corresponding registration, of identical or similar trademarks, these must always distinguish or protect sufficiently differentiated products or services so that there is no risk of confusion or association for consumers.

Therefore, it may sometimes happen that there are several trademarks with the same name and intended for similar products or services. In Spain, for the Spanish Patent and Trademark Office (OEPM) to deny or approve the registration of a new trademark that is similar to an existing one, it must be the owner of the previous trademark who initiates actions to oppose the registration or to request the cancellation of the new trademark. This is because trademark owners have an exclusive right that allows them to prevent third parties from registering a similar trademark to theirs.

Preliminary Research of Existing Trademarks

Before proceeding with the registration of a trademark, it is essential to use the tools and databases available both at the European Union Intellectual Property Office (EUIPO) and the OEPM to ensure that the trademark does not infringe pre-existing rights. Preliminary research may include phonetic, graphic, and conceptual searches to identify possible conflicts.

Opposition Form

Any natural or legal person can apply for the registration of a trademark or trade name through the OEPM’s electronic headquarters. The application will be published in the Official Gazette if it does not present formal defects. From its publication, a period of two months will be opened for a third party to file oppositions and/or observations against the registration.

That is, if a trademark owner considers their exclusive right to be harmed by the application for the registration of a similar trademark or trade name, they may file an opposition or a written observation.

Subsequently, the competent court or office for each case will analyze the opposition and decide whether to grant or deny the registration of the trademark, considering the existence or non-existence of defects and the parties’ arguments, publishing the resolution in the corresponding Official Gazette.

For trademarks registered with the European Union Intellectual Property Office (EUIPO), once the application is submitted, the Office will process the trademark and study the possibility of registering it during the so-called examination period. If there are no objections from the EUIPO, the trademark will be published in the 23 official languages of the EU. Once the trademark is published, there is the possibility for a third party to oppose the registration within three months from its publication. This process is long and tedious, but the tribunal gives both parties the opportunity to present their evidence and arguments. The EUIPO advises new applicants to search for potential risks before submitting the application and, if the opposition is admitted, allows the trademark to be registered in national registers, provided there is no conflict with a previously registered trademark.

Post-Registration Actions: Monitoring and Defense

After registering a trademark, it is advisable to hire trademark monitoring services to detect possible infringements early. These services allow the owner to react quickly to conflicting registrations and take appropriate legal measures.

Legal Consequences of Trademark Infringement

Registering and using a trademark similar to an existing one can have serious legal consequences, including trademark infringement lawsuits, compensation for damages, and possible cancellation of the registration. It is essential to understand these implications to avoid legal and financial risks.

Do not hesitate to contact Letslaw if you have any questions about how to file an opposition or how to find out if the trademark you want to register is already registered.