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▼ BROWSE ISSUES ▼
Issue 24

Options to prevent others from taking advantage of your trademark

Claudia Jelea
Avocat & Consilier in domeniul marcilor
@IP Boutique
OTHERS

Any entrepreneur (the IT domain not excepted) knows how difficult it is to build a brand and how important it is in a business - a prestigious trademark on the market, but also time, energy and money investments for advertising, promotion, etc. The brand plays an important role in the marketing strategy of any company and it contributes to the consolidation of its image and fame. For some companies, it even represents their most valuable asset.

Therefore, you will be prejudiced when your brand is illegally used by other people - mainly, because of the risk of confusion that may be generated in the perception of customers (the customers should be able to easily differentiate between identical or resembling products or services).

Here are a few options at hand for the owner of a trademark, in order to reduce the risk of possible disputes in the court of law, caused by the violation of their brand.

Brand Monitoring

Nowadays, each new request to register a brand is electronically published in an official newsletter of OSIM . Within a period of two months from the publication, concerned people are allowed to make a stand against the respective registration. Thus, during this period, as the owner of a trademark that is protected (also) on the territory of Romania, you have the possibility to oppose, if you consider that the registration of the new trademark could harm yours.

So, if you are not diligent and you do not object within the deadline stipulated by the law, you may be taken by surprise by the fact that one of your competitors has managed to register a brand that is similar or even identical to your brand.

Basically, this actually involves monthly monitoring of the newsletters in which OSIM publishes the new trademark requests and checking, among others, whether there is one which is identical or similar to your brand.

If you do not have the necessary resources (time, patience, competence, etc.) to continuously monitor the new trademark requests submitted to OSIM and to establish which of them might conflict with your trademark, you can choose a monitoring service provided by advisers authorized in the domain of trademarks.

Notifications to discontinue

If you found out that another person is using your brand on the market, without your consent, you have the classical option to bring the case to trial or you may even notify the criminal prosecution body.

As a cheaper and quicker alternative, you can send a formal notification to request the respective person to no longer breach your trademark right (the so-called Cease and Desist Letter from the Anglo-Saxon practice). Thus, you can inform them on the possible conflict and ask them not to use the respective brand anymore (under the threat of a lawsuit), or you can suggest them to negotiate a co-existence agreement of the two brands.

The content of such a notification varies from case to case, depending on the actual situation, and it involves the invocation of some legal texts and pertinent arguments. Therefore, it is advisable for you to be assisted by a specialist who can help you write the notification in a manner as formal and as official as possible and to document it correspondingly.

These notifications do not always have the anticipated effect; they don"t always do the trick. In practice, there are plenty of cases when the notifications are ignored and the breaches go on untrammeled. What can be done in this case?

There are other solutions, depending on the case: arbitration, mediation, court proceeding in the competent court of law, frontier laws (to prevent the import of counterfeit products). However, despite of what you may have heard, the arbitration in Romania is not necessarily less costly and quicker than the court of law. And mediation has benefits only if the opponent is also of good faith and wants the two of you to find together an amiable way to extinguish the conflict.

Brand protection on the Internet. The domain name

In practice, it is considered that an Internet domain name including a name that is resembling or identical to that of a brand, may violate the rights of the owner of that brand - due to the risk of confusion among the clients. Therefore, for an entrepreneur who is fond of the unicity of his brand, the monitoring of new Internet domain names may prove useful.

There are cases, not few, when the entrepreneur has not paid enough attention to the online environment and he may find out that his trademark is already registered by someone else, as a domain name: either cybersquatters - namely those who in bad faith register domain names containing brands owned by different companies with the purpose of reselling them later, either traders who sell the same type of products as the owner of the brand.

Until recently, most of the times, there has been a "war" going on on the .ro and .com extensions - either by court proceedings or by arbitration with WIPO Arbitration and Mediation Centre . But there are also other reasons for concern in the context of the emergence of the new and varied domain names (gTLD) which are about to given into use soon by ICANN (new possible examples gTLD: .game, .software, .clothing, .shop, .car, .tourism, .kodak, etc.).

Here you can find an infographic done by ICANN, regarding the way in which the owners can protect their brands in the online environment, following the "revolution" of the new domain names (for instance, by a registration with the Trademark Clearinghouse ).

In conclusion, there is a series of possibilities to solve the unpleasant situations related to the violation of trademark - it is up to you to find the one(s) you consider most appropriate to your specific situation.

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