We have drafted a cease and desist letter

October 04, 2018


In January 2018, we successfully completed the registration of a European Union trademark for our client, who subsequently commissioned us to carry out trademark monitoring in order to be able to take action to protect his trademark on time in the case that applications for registration of similar/ identical marks are filed. The software that we use to provide the trademark monitoring service has been ranked the world’s best trademark search algorithm. The software generates and provides reports each week containing all similar and/or identical trademarks that have been filed for registration. In March 2018, the software identified a similar trademark that has been filed for registration in Germany. Since our client’s earlier mark is a trademark of the European Union, it has an effect on the territory of all EU member states, including Germany. The contested mark is a combinative trademark consisting of a word and figurative element. There is a high degree of similarity between the earlier and the contested trademark, and the services for which the earlier mark is registered and those for which the trademark applied for are identical and therefore there is a likelihood of confusion among customers.

We have advised the client that the fastest and most appropriate way to resolve the dispute is to prepare and send to the applicant of the trademark and his industrial property representative a cease and desist letter. The client assigned us the task of writing the letter. In the letter, we have compared the two trademarks and also the services. There is a high degree of similarity between the two marks, and the services are identical. We provided the applicant of the contested mark two weeks to provide evidence that he had limited the services in the application in the manner specified in the letter. We pointed out that if we do not receive evidence that the services were limited within the specified time limit, we will take all steps to protect the client’s trademark rights by filing an opposition against the registration of the trademark within the three-month period. We have provided the certificate for registration of the earlier trademark as a proof. As a result of the cease and desist letter that we have sent, the industrial property representatives of the applicant limited the services in the application and provided proof, therefore there was no need for filing of opposition against the registration of the contested trademark.


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