Want to register a trademark and you have already made sure that there are no absolute grounds for refusal? Then your are on a good path but a challenging task remains – to verify if your mark is not too similar to those that already exist and will not expose you to an opposition! On the other hand, you can also make use of this instrument should anyone want to register a mark that infringes your interests.
If you have filed for registration of a mark and the office has not at least partially rejected it (EUIPO) or has not issued a decision to refuse protection (UPRP), your application is published (EUIPO) or announced (UPRP). Regardless of the procedure, the result in such a case is that third parties gain full knowledge of the application. If one of them owns an earlier trademark to which your designation seems too similar to them... you should prepare for a dispute.
What can a rightholder of an earlier so-called collision mark, who has noticed your attempt to register the designation, do? Within 3 months from the date of publication of the application (announcement of it), they may file an opposition to your application. The opposition initiates a special stage of registration proceedings, known as opposition proceedings. During it, holders of other trademarks will try to show that the designation for which you seek protection is too similar to those for which they have exclusive rights. This may result in your application having to be amended or even dismissed in its entirety.
As we have already mentioned, opposition proceedings in themselves are not only a threat. For you, they can also be a valuable tool to fight for your rights and protect your brand image. By regularly monitoring trademarks for which businesses are seeking protection, you will be able to catch whether someone is looking to profit from your brand reputation by misleading consumers and reducing your revenue. So be alert and react! Above all, remember that in order for an opposition to be filed successfully, it must be paid for!
Exactly what conditions must be met in order for someone to object to your application, or for you to be the one to successfully stop someone else from registering a particular designation? Pursuant to Article 8 of Regulation 2017/1001 (accordingly, Article 1321 IPL), an applied-for trademark shall not be registered if:
- if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;
- if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
Cases of so-called double identity (identity of both the trademark and the products for which it is applied for) are relatively rare. Most often, full identity of marks does not go hand in hand with identity of the product range. For example: MONSTER.
The word mark “MONSTER” was registered at the EUIPO in 1999 by Monster Worldwide, Inc. with an application date of December 18, 1997 for the 42nd product class according to the Nice Classification (providing access to interactive databases relating to recruitment of personnel and employment, resume creation, resume transmittals and communication of responses thereto, all through a global computer network). [EUTM 000706655]
In 2005, an identical word mark “MONSTER” with an application date of July 22, 2002 was registered by Monster Energy Company for 32 product classes (fruit juice drinks, soft drinks, carbonated soft drinks, aerated water, soda water and seltzer water enhanced with vitamins, minerals nutrients, amino acids and/or herbs). [EUTM 002784486]
It is much more common for trademarks to be merely similar. Interestingly, the similarity of marks can and most often does result from the fact that the marks are at least in some part identical. For example:
1. „MONSTER LAB”; EUTM 006144869; application: 27 July 2007 r., classification: 9,16, 41; Sauare Enix Limited
2. „#MonsterGaming”; EUTM 017815671; application: 15 February 2018 r.; classification: 35, 41; Monster Energy Company
3. „MONSTER ENERGY”; EUTM 018660705; application: 23 February 2022 r.; classification: 9,35, 41, 42; Monster Energy Company
4. 
EUTM 018095714; application: 16 July 2019 r.; classification: 36, 41; Monster Energy Company
In the illustrated example, the common element of the marks registered for the same product categories is the word element “MONSTER.” However, each of the marks also has additional elements that distinguish them from one another to some extent. Sometimes, however, it happens that such elements are missing from the marks - in which case the risk/chance of refusal of registration is significantly higher. For example, in 2019. The Court of Justice of the European Union upheld EUIPO's decision to refuse registration of the word mark “DUNGEONS” applied for by Kalypso Media Group GmbH, among others, for products in classes 9 and 41. The opposition was filed by Wizards of the Coast LLC, who is entitled to an earlier word mark “DUNGEONS & DRAGONS.”
As the above examples illustrate well, the very question of whether and how an earlier mark will affect the registration of a later marks does not depend solely on objective factors, such as the level of identity of signs or products. Among other things, the involvement and efforts of the rightholder will play a decisive role. Each trademark case is different, and in each of them we should look for different arguments that will allow us to protect our right as broadly as possible, or that will most effectively demonstrate the absence of an actual threat to the interests of other entrepreneurs. Such circumstances may be relevant, as:
1) the type of product(s);
2) the characteristics of a typical buyer;
3) fanciful or descriptive nature of identical/similar elements;
4) the strong distinctiveness of the original sign or its elements;
5) the actual extent of use of the earlier mark.
It should be borne in mind that each of the above circumstances and assessments may change over time!
Regardless of the odds of success of an objection, remember that the disputing parties can always come to some sort of agreement. So perhaps your goals can be achieved without getting involved in a long-standing dispute. According to media reports, this is how, for exampple, the disagreement between Take-Two Interactive and Remedy over the following marks was resolved:
left, Take-Two Interactive's earlier trademark; right, Remedy's mark
Remember - when preparing to file a trademark application, it is essential to conduct or have conducted an analysis that identifies any trademarks that potentially conflict with the mark you want to use in the future. Don't forget that the broader the territory you want to operate in, the more sign databases you need to look through to make sure you don't encounter a problem in any of them. An unfortunate trademark dispute can effectively hinder the growth of even the most thriving business. If your mark is already protected - don't rest on your laurels! Monitor the information published by the various offices and react to notifications regarding trademarks that may mislead consumers resulting in your loss of clientele.