In June 2015, a client who operates in the field of restaurant business has approached us to conduct a preliminary trademark search for the trademark with which he would like to designate his restaurant. The client provided a figurative trademark consisting of a word and a figurative element. After conducting a detailed search in the databases with filed for registration as well as registered trademarks, we have found out that by June 1015 there were eight similar trademarks registered for goods and services which were not similar to those of class 43 of the Nice classification of goods and services for the purposes of registration of trademarks. After carefully analyzing the results, we prepared a detailed analysis. We have informed the client that the proprietors of the earlier marks may oppose the registration of the later mark but the opposition will be upheld as justified if it is proved in the opposition proceedings that the earlier mark (s) is/are marks with a reputation. According to Article 50a, paragraph 1 of the Law on Marks and Geographical Indications the following shall be taken into account when determining whether the mark is a well-known mark or a mark with a reputation:
- the extent to which the mark is known or recognized among the part of the community which covers the real or would-be users of the goods or services or the persons engaged in the respective distribution network or the business circles dealing with the goods or services in question;
- duration, extent and geographical area of use of the mark;
- duration, extent and geographical area of public representation of the mark, including advertising, making public and displaying at fairs and/or exhibitions of the goods and/or services in relation to which the mark is used;
- information about the successful enforcement of the rights in the mark, if registered;
- value of the mark;
- other circumstances.