Conflicting older trademark registrations may not necessarily block the registration of your chosen brand name. Noé Himmelreich explains how an in-use verification search can help you to assess legal and commercial risk.
If a trademark availability search establishes the existence of a prior right that potentially conflicts with your chosen brand name, it doesn’t necessarily mean you are blocked from registering and using your brand name. If an existing trademark has been registered for more than five years and no longer appears to be in use, you could challenge that registration for lack of trademark use.
What to do if your trademark availability search identifies a conflict
As we previously covered, trademark availability searches research the registrability and availability of any brand names or logos that you want to register as trademarks. This involves searching trademark registers to identify older similar and/or identical trademarks for similar goods and services (‘classes’), which may cause market confusion and, therefore, pose a potential risk to the registration and use of your trademark.
If your trademark is similar or identical to a previously registered trademark, this earlier trademark does not necessarily constitute an immediate obstacle to the registration of your trademark. Trademark legislation stipulates that the right to a trademark expires if the trademark has not been used appropriately after the initial grace period of five years (three years in some jurisdictions, such as China).
However, it is important to note that the right to a trademark does not automatically expire. So long as no one challenges that trademark, it will remain registered and valid. In other words, you must formally request the cancellation of that trademark at the relevant trademark office for it to be officially revoked and removed from the register.
If you decided to launch your brand without filing a cancellation action, the other party may not challenge your use of the trademark. However, if they decide to use their registered trademark again, you could end up in a situation where neither party holds the exclusivity to that brand name. In other words, the other party cannot object to your trademark, even if they subsequently start using it again, as it was launched during a period of non-use. Instead, they must tolerate your trademark, and the same will apply in return.
Therefore, to protect your brand's exclusivity and to prevent the trademark owner of an expired trademark from resurrecting the unused mark, it’s important to file a cancellation action against the unused mark. The unused trademark's owner will however get the opportunity in the cancellation proceedings to challenge the cancellation action by providing evidence of use.
Why undertake a trademark use search?
An in-use verification search will clarify whether a mark in the relevant trademark register is being used. Not only does the search checks a wide range of sources to confirm whether the mark is being used (and as per the registration), but specialist researchers will also contact the trademark owner anonymously to provide added certainty.
Based on the results of the in-use verification search, our dedicated search team can advise you on the likelihood of your cancellation action being successful. For example, the search may establish that the mark is no longer in-use or that it is being used in a different format from the registration, providing you with strong foundations to bring a challenge.
As such, in-use verification offers vital insights when deciding whether to register a particular trademark and in the event of a conflict with the holder of a previously registered trademark. The results will help you determine your position and accurately determine the risks you face.
To find out more about in-use verification searches, or trademark availability searching in general, speak to your Novagraaf attorney or contact us below.
Noé Himmelreich is a Junior Associate at Novagraaf in Amsterdam.