The owner of an earlier trade mark registration (and in some countries of an unregistered trade mark which has been used to a sufficient degree) can use that registration (or other earlier right) to prevent the use and registration of an identical or similar trade mark in relation to identical or similar goods or services.

In most countries, details of a trade mark application are published in a trade marks journal after the application has been accepted for registration. The purpose of this publication is to provide third parties with the opportunity to oppose the application, usually because they own an earlier conflicting trade mark registration or other rights.

Mathys & Squire can help you to lessen the risk of an opposition being filed against your application by carrying out appropriate searches to identify any conflicting trade marks prior to filing a trade mark application. But, if an opposition is filed against your application, Mathys & Squire has a strong track record in successfully defending oppositions.

Conversely, Mathys & Squire’s team of trade mark attorneys is experienced and skilled at assisting clients in preventing third parties from acquiring registered trade mark rights which conflict with our clients’ earlier trade mark rights.

We can operate watching services to identify whether third parties have attempted to register trade marks, domain names or company names which may conflict with your trade marks. If any such attempts are identified, we can advise on the best strategy for enforcing your rights against the third party, including negotiations by correspondence or telephone and trade mark oppositions or other legal dispute procedures.

In some cases, a brand owner does not become aware of the existence of another trade mark until after it has been registered or needs to cancel an earlier registration because it has not been put into commercial use. Mathys & Squire is in a position to help with either of these eventualities and to ensure that your trade mark rights remain or become as strong as they possibly can be.

We take the view that our clients are best off avoiding opposition or cancellation proceedings where at all possible and will always endeavour to negotiate an appropriate commercial solution on behalf of our clients where circumstances allow. However, if opposition or cancellation proceedings are inevitable, we have the skill and expertise to achieve a successful conclusion.