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Challenging an identical trademark in the EUIPO [Case Study]

Reading time
3 min

At Bonamark, we take pride in helping our clients protect their intellectual property. Recently, producers of medical equipment in class 10 came to us to register their logo in the EU. We guided them through the registration process, and everything seemed fine until a year later when our EU attorneys alerted us to a similar trademark filed in the EU.

Choosing the right solution to address the issue

Visually, the trademarks were different, but they sounded identical, and both covered gloves. Our clients were rightfully concerned that customers could be confused, as the other party had filed the trademark for household gloves (class 21) while our client had claimed class 10 for gloves meant for medical purposes. Obviously, these products were very similar, and a regular consumer would see little difference between the two types of vinyl gloves.

We knew we had to act fast to protect our client's interests. We could either start an expensive opposition procedure or contact the other party directly by sending a Cease and Desist letter. Our client chose the latter and sent a Cease and Desist letter with a request to remove gloves from the other party's application. This is the correct approach as if the other party is willing to cooperate, the case can be solved without the opposition process.

An opposition procedure in the EUIPO (European Union Intellectual Property Office) is a legal process that allows any interested party to challenge the registration of a trademark that has been filed with the EUIPO.

During the opposition procedure, the opponent can argue that the trademark should not be registered because it conflicts with their existing trademark or because it does not meet the requirements for registration. The owner of the trademark that is being opposed can respond to the opposition and argue that their trademark should be registered.

A Cease and Desist letter is a written communication sent by an individual or a company to another party who is engaging in a certain activity that the sender believes is infringing upon their legal rights. The letter usually demands that the recipient immediately stop the offending behavior, or else face legal action.

We waited with bated breath for their response. And within a fortnight, we received it. The other party had met our client halfway and voluntarily removed gloves from their application.

We were thrilled! Not only had we saved our client from an expensive and time-consuming opposition procedure, but both parties had reached an agreement that worked for everyone.

At Bonamark, we understand the importance of your brand, and we take your concerns seriously. We're here to guide you through the complex world of intellectual property so that you can focus on what matters most - your business. Let's work together to protect your brand!

Author: Ana Levenson


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