The 5 good post-deposit practices 1/5: external demands

[fusion_builder_container hundred_percent="no" equal_height_columns="no" menu_anchor="" hide_on_mobile="small-visibility,medium-visibility,large-visibility" class="" id="" background_color="" background_image="" background_position="center center" background_repeat="no-repeat" fade="no" background_parallax="none" enable_mobile="no" parallax_speed="0.3" video_mp4="" video_webm="" video_ogv="" video_url="" video_aspect_ratio="16:9" video_loop="yes" video_mute="yes" video_preview_image="" border_size="" border_color="" border_style="solid" margin_top="" margin_bottom="" padding_top="" padding_right="" padding_bottom="" padding_left=""][fusion_builder_row][fusion_builder_column type="1_1" layout="1_1" spacing="" center_content="no" hover_type="none" link="" min_height="" hide_on_mobile="small-visibility,medium-visibility,large-visibility" class="" id="" background_color="" background_image="" background_position="left top" background_repeat="no-repeat" border_size="0" border_color="" border_style="solid" border_position="all" padding="" dimension_margin="" animation_type="" animation_direction="left" animation_speed="0.3" animation_offset="" last="no"][fusion_text] Once you have registered your trademark, it is common to think that the main thing is done, and that you don't need to worry about it for the next ten years (because it is registered for 10 years, and renewable). However, if the trademark does not require any particular maintenance (no annual maintenance fee, for example), it is important to keep an eye on it throughout its life. As an intangible asset of a company, it can notably increase in value over time, provided you do the right thing. Discover in this series of posts the 5 post-filing best practices that will make all the difference between a weak and a strong brand.

Tip 1: Reacting to external demands

It is common that after the filing of a trademark, its owner is subject to various solicitations about it. These may be classic scams, or more serious claims.

The scams

Those who have set up a company know it: the vultures are never far away! In this case, the companies in question are generally pretending to be official registers used to publish a trademark or register a company on some kind of list. The practice is common, and virtually all trademark applicants receive at least one such letter. The important thing to remember is only that the fees paid when filing a trademark cover its publication in the only official register of trademarks, i.e. the one kept by the INPI, as well as its registration. It is never necessary to pay any additional amount to anyone, unless it is claimed by the INPI itself during the procedure, for example to add a class of goods or services. This type of solicitation must therefore be completely ignored.

Complaints

More embarrassing, the complaints generally come from third parties, holders of prior rights on a name that is identical or close to the one that has just been registered, and who generally act through their lawyer or their Industrial Property Attorney. They should never be taken lightly, even if they are considered unfounded. In order to avoid potentially long and costly proceedings, it is necessary to favour dialogue and to try to find an amicable solution to the dispute. Most of the time, claims are based on an earlier trademark, with the owner monitoring the registers and acting against the registration of trademarks that are identical or too close to his own, which could create a risk of confusion with his own trademark. This allows the owner to preserve his monopoly on his trademark, and to enhance its value. When faced with such a claim, the first reaction is often revolt or dismay. Neither reaction is positive, as it prevents a proper analysis of the situation. The rebellious will send a strongly worded e-mail to the lawyer to express their displeasure, which is sure to leave the lawyer unmoved, and the overwhelmed will abandon their brand without trying to find out if it can be saved. The first step is to look for all the legal arguments that might help to extricate oneself from this situation. If the law is not on our side, then we have to develop factual arguments that would allow us to find an arrangement that satisfies both parties. Sometimes, unfortunately, it is impossible to reach an agreement. In which case, the decision must be made to fight, or to abandon the deposit. In the event of a complaint, having recourse to a trademark law professional to defend oneself allows one to have the same weapons as the opponent: the Industrial Property Attorney who will study your case will be able to develop a convincing argument in the context of negotiations, and if these cannot be successful, to determine the chances of success and the costs of a defence against an action taken by the opponent. /fusion_text][/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]