Opposition proceedings

A trademark proprietor can act against identical or similar trademarks applied for the same or similar goods or services. In the case of well-known trademarks, action can also be taken against similar trademarks applied for different goods and services. The fastest and most cost-effective way is to start opposition proceedings at the trademark office in the country concerned. 

Besides the fact that opposition proceedings are relatively fast and that they cost less than average court proceedings, a significant advantage is that third parties are often confronted with the trademark owner's objection at an early stage. In practice, a third party is more inclined to stop an infringement if not much investment has been made yet.

Below is an overview of the opposition possibilities and duration thereof in the event of an infringing trademark application by a third party in the Benelux, Germany and the EU.

1: The processing times of proceedings can vary due to various factors, such as, for example, the actions of the parties involved, the complexity of the case, extensions during the cooling-off period, requests for evidence of use, etcetera.

A trademark proprietor can also act against the use of an identical or similar trademark by a third party for the same or similar goods or services. In the case of well-known marks, action can also be taken against similar marks applied for different goods and services. Action can also be taken in circumstances where there is unfair advantage (free-riding) or detriment to the distinctive character or reputation of the trademark. In that case, it is possible to apply for an injunction at the national court or to start proceedings on the merits. 

Summary proceedings

In summary proceedings, an injunction against the third party's use of the trademark can be sought. Generally, it is not possible to claim damages. An advantage of summary proceedings is that it is an urgent procedure. An injunction can therefore be sought relatively quickly. A summary judgment does not give final judgment. If the court rules that a third party must cease using a trademark, the plaintiff must still file proceedings on the merits. In the meantime, however, the third party may not use the trademark. In practice, we often see parties accepting the outcome of summary proceedings and not starting proceedings on the merits.

Proceedings on the merits

In proceedings on the merits, in addition to an order prohibiting the use of the trademark by the third party, damages may also be claimed e.g. in the form of profit disgorgement. Below is an overview of the possibilities and duration of the court actions in the event of use of a similar or identical trademark by a third party.

Successful trademark enforcement requires a strategic approach to protect your brand’s identity and prevent infringement.

Registration and use

In order to be able to enforce trademark rights, a registration is key in the regions where you are active or plan to expand. Also, it is important to ensure proper use of your trademarks to avoid challenges based on non-use.

Monitor for infringement and take action

Regular monitoring is important to detect potential infringing applications or trademark infringement early. We provide Trademark Watch Services. These services notify you of identical or similar trademarks being filed.  Depending on your field of business it might be advisable to check online marketplaces, social media platforms and other websites for unauthorized use.

Once potential infringement is detected, generally it is advisable to act proactive. Examples are:

1. Sending a cease-and-desist letter. This may lead to a solution without further legal action;

2. Starting online Notice and Takedown Procedures. Platforms such as Bol.com, Amazon and Alibaba have own procedures to remove counterfeit or infringing products; 

3. Filing opposition proceedings in the event of infringing trademark applications; 

4. Start court proceedings;

 5.  Before taking any action, it is advisable to collaborate with your attorney.