trademark law case 1

Starting position: A Spanish competitor of our German client had filed a European Community trademark at the European Trademark Office, which was identical to the company name of the client. Our client only had a German internet domain with the name of his company, but not his own trademark. The business functions of our client was jeopardized in Germany by the European trademark application.

Goal: Cancellation of the European trademark on the basis of a German domain.

Solution: After publication of the EU Community trademark, an opposition was filed against the trademark based on the German internet domain (in Spanish). All of the documents required for proving the internet use were translated into Spanish and were filed at the OHIM or HABM in Alicante, respectively. At the same time, the reimbursement of the opposition fee was requested. The EU Trademark Office finally agreed to all requests and cancelled the EU trademark application of the competitor. Our client was then able to file his own trademark applications in various European states.