What to do if your trademark registration has been hijacked by a third party?

The consequences of an external trademark registration

When a third party registers your trademark, it can have far-reaching consequences for your business. In most cases, a trademark is registered to claiming legal property rights. This means the registered party, depending on the laws in the country, gets exclusive rights to use the trademark. For you, this could mean suddenly being faced with restrictions on the use of your own brand name.

In extreme cases, an external trademark registration can prevent you from using your brand at all. This can lead to financial losses, reputational damage and even the complete overhaul of your branding strategy. It is more common than you might think and happens mostly in countries where trademark registration is relatively easy and trademark enforcement is less strictly monitored.

How can someone else register your trademark?

In principle, anyone can register a trademark anywhere in the world, as long as it has not already been done in the country or region concerned. Trademarks are territorial, which means that the registration of a trademark is only valid in the country or region where it is registered. So someone may register your trademark in a country where you yourself have not yet done so, even if you have been operating in your home country for years.

A practice that is common is 'trademark squatting'. This involves a third party registering a trademark with the intention of making money later by selling the trademark back to the original owner. These parties take advantage of the fact that many companies fail to properly regulate their trademark registration globally, especially in markets where they may not have direct operations.

What can you do if your trademark has been registered by a third party?

Should you face an external trademark registration, there are a number of steps you can consider:

1. Contact a specialist: The first step is to hire legal counsel specialising in trademark registration. It is essential to seek legal advice from someone experienced in international trademark law. They can assess the situation and advise you on the possible next steps.
2. Investigate the nature of registration: Not every trademark registration by a third party is immediately a threat. Sometimes the trademark may be registered for a different product or service, or in a country where you have no commercial activities. It is important to investigate whether the registration really affects your business operations.
3. Submit opposition: In many cases, you can object to the registration of your trademark. To do so, you usually have to be able to prove that you used the mark before (in the case of unregistered trademarks) or that there was malicious intent (as in the case of trademark squatting). This process can be time-consuming and costly, but it is often the only way to get your trademark back.
4. Negotiate: If the registration of the trademark by a third party is legitimate, you can try to negotiate a licence or takeover of the trademark. This can be a quicker and cheaper solution than a legal battle.

How do you prevent your trademark from being registered by a third party?

As the saying goes, prevention is better than cure. Fortunately, there are several steps you can take to avoid ever finding yourself in this unpleasant situation:

1. International trademark registration: If you plan to use your trademark in multiple countries, it is wise to register it internationally. This can be done through the WIPO (World Intellectual Property Organisation) or through regional offices such as the European Union Intellectual Property Office (EUIPO). This protects your trademark in multiple countries and makes it harder for third parties to claim your brand.
2. Actively monitor your brand: It is a good idea to actively monitor whether registrations of your trademark are taking place anywhere in the world. Several services are available for this purpose that send notifications when someone tries to register a trademark similar to yours.
3. Be proactive: Don't wait until your brand has international success to register it. Registering your brand before you start operating in new markets can avoid many problems. Think ahead and protect your brand in countries where you might want to operate in the future.
4. Bet on brand awareness: The more well-known your trademark is, the more difficult it becomes for third parties to register it successfully. In some cases, trademarks known as 'well-known' can enjoy additional protection at an international level, even in countries where they are not registered.

Conclusion

Trademark registration by a third party can be a pose a serious problem for your business. The best way to avoid this situation is to be proactive in protecting your brand, both nationally and internationally. If you do face an external trademark registration, engage a specialist immediately and take steps to recover your brand. Protecting your brand is essential to maintaining your business identity and your future growth.

Are you facing a situation where your trademark has been registered by a third party, or would you like to know more about how to protect your trademark?
At Funkhaus we are happy to help further with no-obligation advice.