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After registering your trademark, it is common to think that the main thing is done, is that you don't have 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 special 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, in particular, increase in value over time, provided that the right thing is done. Discover in this series of notes the 5 good post-registration 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 annoying, the claims generally come from third parties, holders of prior rights on a name identical or close to the one just filed, 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 lengthy 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 trademark owner monitoring the registers and acting against applications for trademarks that are identical or too close to his own and that are likely to create a likelihood 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 overwhelming. Neither reaction is positive, as it prevents a proper analysis of the situation. The revolted will send a heartfelt e-mail to the lawyer to express their displeasure, which will leave the lawyer in a state of shock, and the overwhelmed will abandon their mark without trying to find out if it can be saved.
In the first instance, we must seek all the legal arguments that could help us to extricate ourselves from this situation. If the law is not on our side, then we must develop factual arguments that would make it possible to find an arrangement that satisfies both parties. Sometimes, unfortunately, it is impossible to reach an agreement. In which case then we have to make the decision to fight, or to abandon the deposit.
In the event of a claim, having recourse to a trademark law professional to defend oneself allows one to have the same weapons at one's disposal as one's opponent: the Industrial Property Attorney who will study your case will be able to develop a convincing argument in negotiations, and if these cannot succeed, to determine the chances of success and the costs of a defence against an opponent's action.
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