It is possible to peacefully resolve the issue of intellectual property in the EU
The procedure for registering trademarks in the EU is quite simple, fast and transparent. As such, there is no substantive examination of applications for trademarks in the EU (that is, the examiner does not check for conflicts with previously registered trademarks), but the so-called system of oppositions is in place.
That is, interested parties are given a certain period (for example, 2 months) during which they can file an opposition against the filed TM application if they believe that it violates their priority rights. At the same time, as a rule, oppositions on absolute grounds are not provided, but should affect the earlier rights to identical and similar to the degree of confusion, trademarks or other subject matter. The decision on registration is made by the trademark office based on the analysis of only those objects from the right holders of which the relevant oppositions have been received.
Although this system has significant advantages (primarily related to the simplicity and speed of registration of trademarks), at the same time it forces right holders to be constantly on guard, to monitor the register of TM applications for the appearance of applications that may infringe their rights. In addition, sometimes right holders go overboard with asserting their rights and can abuse rights, raise oppositions in a situation where the designations not only have a minimum degree of similarity, but are also claimed in relation to heterogeneous goods and services.
Case from practice
REVERA was contacted by a client, whose trademark application in the EU was opposed by the owner of a similar designation, with a request to help resolve the dispute and defend the trademark application.
REVERA's lawyers worked out the issue and came to the following conclusions:
- the colliding designations are somewhat similar, but this similarity is not critical and the consumer is more likely to guess that these may be trademarks of the same owner, rather than this fact can be obvious when compared;
- the earlier trademark is registered, among other things, for some goods that are in the same class of goods and services as the goods applied for by the REVERA client, but there is practically no overlap in key products, the products themselves are heterogeneous, i.e., they belong to different areas and are intended for a different range of consumers.
Taking into account all these facts, we prepared a reasoned letter to the representatives of the opposing party, in which we justified the lack of competitive relations, pointed out the existing differences in designations, emphasized that the parties work in different market segments for different consumers, and proposed to peacefully resolve the situation, taking into account each other's interests. In particular, the opposing party was asked to withdraw the opposition and sign a coexistence agreement, in which the parties, roughly speaking, undertook not to get into each other's zone of influence, not to compete for certain products, in return for which our client also undertook to reduce the list of declared goods, excluding from it goods that were not key for him, but they were of interest to the opposing party.
As a result of the negotiations, the parties signed a coexistence agreement, our client filed a request with the EU Trademark Office to reduce the list of claimed goods and services, and the opposing party withdrew the opposition filed. The situation was resolved peacefully.
This story once again confirms that there are practically no hopeless situations and in almost any case there is a chance to come to an agreement, the main thing is to competently and reasonably convey your position, with which REVERA's lawyers are always ready to help, as well as to defend the interests of the client by other legal means, if it was not possible to reach an amicable agreement.
Author: Pavel Klementsov
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