You’ve registered your trademark with a lot of care and attention, but what do you do if you suddenly encounter another trademark that is suspiciously similar to yours? Perhaps you see it in the BOIP Trademarks Register, for example, or online or somewhere else. Below we set out what you can do in such a case.
Responsibility lies with you
With a registered trademark you are in a strong position with the right to take action against third parties who want to make unauthorised use of your trademark. Whether someone is infringing on your trademark right though is something that you have to keep an eye on or ‘monitor’ yourself. We do not check whether a new trademark application conflicts with the (trademark) rights of others. If you would rather outsource monitoring, you can subscribe to the Trademark Alert of the BOIP Trademarks Register or seek the services of an IP professional. If someone is infringing on your trademark right, it is up to you to take action against it yourself.
How do you know if a trademark is infringing on your trademark right?
It is not the case that every trademark similar to yours is automatically infringing on your trademark right. That depends, among other things, on the extent of the similarity between the trademarks or the products and services belonging to the trademarks and on the risk of confusion with the public.
Have you seen a conflicting trademark? Here’s what you can do
If you encounter a conflicting trademark in the BOIP Trademarks Register, you have four options:
- Write to the other party. You can ask the other party to withdraw the conflicting trademark and to stop using it.
- File an opposition. If you are still within the period of opposition, and it concerns a Benelux trademark or an international trademark specifying the Benelux, you can file an opposition with BOIP.
- Initiate a cancellation procedure. If opposition is no longer possible, you can initiate a cancellation procedure with BOIP.
- Apply to the courts. If you want to take further legal steps, you can apply to the courts. They can decide on the validity of the trademark and prohibit its use.
If the conflicting trademark is not included in the BOIP Trademarks Register, it means the user does not have a registered trademark in the Benelux. In that case you can only write to the other party or apply to the courts.
Get legal advice: always a good idea
As an independent and official body BOIP may not give advice in the case of dispute. However, it is precisely in the case of dispute that legal advice is highly important. If you suspect someone of infringing on your trademark right, we would advise you in that case always to seek the services of an IP professional. They can give you advice on how best to proceed, as well as strategy for your specific situation.
