At the time of filing an application for a new trademark, various trademark offices, including, for example, the Italian Patent and Trademarks Office and the European Intellectual Property Office, do not carry out any search among the prior trademarks, and therefore they do not issue rejection letters to the proprietor of the new filing, hence entailing that these trademarks are registered even though identical or similar trademarks already exist in that country to distinguish identical or similar products or services.
It is therefore the responsibility of the proprietors of the trademarks to take measures to prevent the registration of new filings of identical or similar trademarks in order to distinguish identical or similar products, and therefore potentially susceptible to infringe the prior rights thereof by filing an opposition. Prior to filing a formal opposition, an attempt may be made to explore the possibility of sending a letter of formal notice in advance requesting the withdrawal of the trademark or a restriction thereof.
The monitoring service proposed by us allows the proprietor who may have initiated this service for the trademark thereof to be promptly notified of filings of posterior trademarks potentially infringing the trademark thereof and thus take prompt measures through administrative opposition proceedings.
Prompt action by filing an administrative opposition allows to block third-party registration rapidly and cost-effectively. In the absence of such monitoring service, by the time you realise that a third-party trade mark has already been registered infringing your own, the only way forward is to initiate invalidity litigation with definitely higher costs.
The monitoring service provides for the forwarding of periodic notes including our first assessment of the existence of a likelihood of confusion between the trademarks, so as to offer the client, proprietor of the prior trademark, the possibility to take measures to challenge the registration of the reported trademark.