"Help, someone's stolen my brand! " 5 tips to get your brand back

Trademark theft", although this expression is not enshrined in law, means that a third party has registered before you the trademark you are exploiting. And this is often perceived as theft by the legitimate user.

You started using a trademark but didn't think about registering it? A competitor registered it before you did, and you don't know how to get it back? Here are a few tips to help you.

How to amicably resolve a brand theft problem

Check your prior rights

You've never registered a trademark? That doesn't matter, you may still be the holder of prior enforceable rights... In fact, domain names and company names are rights in respect of a later mark.

But watch out! The domain name and the company name, to be validly opposed to a third party, must be used in the domain in question. In the case of the domain name, this means that an active site must be visible there, in connection with the goods and/or services covered by the trademark. As for the company name (ie, the name of the company registered at the Registry), it must be used by a company offering goods or services identical or similar to those covered by the contested mark.

Finally, check the list of goods and/or services covered by the trade mark in question. There is no need to be offended by the registration of a trademark for dog food if you are a leather goods manufacturer yourself! The principle of speciality allows two identical trademarks to coexist if they cover completely different activities.

Determine the good (or bad) faith of the applicant

The next question is whether the trademark owner is acting in good or bad faith. Perhaps he thought of the same name as you and filed it without knowing of your existence. This happens often, since the same trademark ideas often come up again and again (especially puns, for example), and others may have had the same idea.

On the other hand, if it seems obvious that the owner of the trademark has registered it in order to harm you, or to get a nice sum of money from it by selling it to you, this can be a strong argument (see below).

The good or bad faith of the depositor will set the tone of your letter of formal notice. It may also simplify (or on the contrary complicate) future negotiations.

Finally, note that the applicant's good faith will not allow him to keep his trademark if you have valid rights to oppose him.

Send a formal notice

The letter of formal notice is the essential prerequisite for any action to recover your trademark.

Indeed, the theft of a trademark, once it has been brought to the owner's attention, may lead him to apologize flatly and to return the trademark to you without difficulty. This essentially works when the filing was made in good faith.

However, in cases of bad faith, this letter may not be sufficient and the matter must be taken to the next level.

Brand theft: how to get it back?

Strictly speaking, there is no such thing as a brand recovery action. Indeed, it is not possible to force a trademark owner to sell you the trademark. But other actions do exist. As these actions do not allow you to recover the trademark on your own account, we recommend that you register it in your name at the same time.

File an objection within the time limit

If you become aware of trademark theft early enough, you can file an opposition before the INPI. The procedure has recently been opened to holders of domain names and company names (among others).

Opposition allows the rejection of the application for registration of a trade mark. If you are successful, the trademark will not be registered.

However, you can only file opposition within a short time limit, which is 2 months from the publication of the trademark in question.

More about the opposition procedure.

Fortunately, if you miss the opposition deadline, you can now fall back on the cancellation procedure.

Cancel the contested mark

Since April 2020, it has been possible to obtain the cancellation of a trademark before the INPI. Until now, this action had to be brought before the courts and was therefore little used.

Now, in a short time and for a fairly modest sum (especially compared to the price and duration of a lawsuit), you can have the opposing mark cancelled. You then have to prove that it infringes your prior rights (such as company name and domain name).

The action for annulment also allows the plea of bad faith to be invoked, which can be decisive. For example, you unveil your new brand name in a living room but you don't think about protecting it. A direct competitor, who has a stand at the same exhibition, discovers your trademark and decides to register it within a few days of the exhibition. The bad faith is obvious and will work in your favour.

Find out more about trademark cancellation proceedings.

In short, if you are a victim of "trademark theft", you may have prior enforceable rights to recover it. Our lawyers will analyse your situation and propose an appropriate strategy. We always give priority to amicable settlement in order to try to resolve the dispute quickly and at a lower cost. Do not hesitate to contact us !

Photo by kat wilcox coming from Pexels