Trademark Watch & Opposition

The question

A registered mark is only as strong as your willingness to defend it. Competitors, new market entrants and unrelated businesses keep filing applications, and some of them will be too close to yours. If nobody notices, a conflicting mark can be published, registered and used for years beside yours, and your position weakens with each year.

Opposition is the cheap and fast moment to act, but the window is short: three months from publication at the EUIPO and two months at the BOIP, and the BOIP period cannot be extended. After that you are left with cancellation proceedings, which are slower, costlier and less predictable. The question is therefore how to know in time, and how to decide which applications deserve a reaction. What a trademark watch is is explained in the Knowledge Base.

Clients come to us in different situations: right after a registration, when they want to protect what they have just paid for; after a first unpleasant discovery of a lookalike on the market; before a funding round or sale, when an investor asks how the portfolio is guarded; or when a mark has become valuable enough that nobody wants to rely on chance any more.

Our approach

We set up the watch around your marks, the territories that matter to you and the classes of goods and services you trade in. Our watch technology runs on a schedule: trademarks through TMview, designs through DesignView. Each run is compared with the previous one, so you only see what is new.

Not every new application is a threat. A rule-based playbook sorts hits by how close they are and how much they overlap with your goods and services, and routes each hit to a likely action, for instance a draft opposition for a close match in your core class. The assessment follows the usual criteria of similarity between marks: the signs compared visually, phonetically and conceptually, the closeness of the goods and services, and the distinctiveness of your earlier mark.

An attorney reviews the hits before they reach you. You then see them in the client portal and instruct us to oppose, investigate further or dismiss. The factors behind that decision, including proof of use, the strength of the earlier mark and the option of a negotiated outcome, are set out in when to oppose a trademark.

If you decide to oppose, we prepare and file the opposition and follow the proceedings. Oppositions, cancellation and revocation actions are tracked with their deadlines, and the coexistence agreements we conclude are recorded alongside. Dates sit in the same docket as your renewals, handled by our portfolio and deadline technology.

What you get

A watch set up for your portfolio, with regular reports and a recommended action for each relevant hit. A clear record of what you decided and why. Where you instruct us to act, a prepared opposition filed within the time limit, or a first approach to the other party, whichever fits your commercial interest better. Many conflicts end in a coexistence agreement or a narrowed specification rather than a decision from the Office.

Some limits are worth knowing. A watch finds what is published; it cannot find unpublished applications or unregistered use. And an opposition is not always the right answer: it can be disproportionate against a distant mark, and an unsuccessful one costs money. Our recommendation takes that into account.

A short example. A Kortrijk manufacturer of garden furniture has an EU trade mark. A run of the watch shows an EU application for a near-identical name for outdoor lighting, published a few days earlier. The attorney reviews it, the playbook has already marked it as a close match in a related class, and the client sees it in the portal the same week. The client instructs us to approach the applicant first. If that fails, the draft opposition is ready and the deadline is in the docket. The client decides each step on a documented recommendation, and the deadline is never at risk because nobody saw the filing.

Next step

Send us your marks, or ask for a portfolio overview, and tell us which markets matter most. We will propose a watch scope and the criteria for the playbook.

Schedule a meeting or contact us.