The priority principle in trademark law states that in the event of a conflict between two trademarks, the older right always prevails. As a rule, therefore, a trademark owner cannot defend themselves by claiming to be the owner of a later trademark.
However, if the owner of an earlier trademark does not oppose a later trademark application, the later applicant could be lulled into a false sense of security. The further the implementation of the trademark by a later trademark applicant has already gone, the less willing the latter will be to refrain from doing so without a potentially lengthy legal dispute. Under certain conditions, a registered younger trademark can also lead to an intermediate right and the owner of the older trademark cannot then prevent coexistence.
Trademark monitoring
Trademark monitoring opens the possibility of taking action against similar trademarks at an early stage, often before there is any use and still relatively cost-effectively, usually by means of opposition.
A monitoring service provider uses software to analyse all newly published trademark applications in the selected trademark registers and the selected classes for similarity with a monitored word or image. In addition, monitoring service providers often provide information about identical newly published trademarks in all classes. Those publications that the software selects as possibly similar are sent as watch notices.
Monitoring can be restricted geographically (e.g. only throughout Austria) or worldwide (in all trademark databases searchable by the service provider).
Domain monitoring
In addition to trademark monitoring, it is also possible to monitor many top-level domains worldwide (country code TLDs and generic TLDs, including the new generic TLDs).
Digression: Trademark Clearinghouse
Many new generic top-level domains ("gTLDs") are now available, such as <.bike>, <.insurance>, <.app>, <.wien>, etc. These make it possible to register a large number of new variants of domain names that can also contain brands (such as <[BRAND].vienna>, <[BRAND].insurance> and the like).
To counteract the associated risk that unauthorised persons could misuse third-party trademarks, ICANN (the organisation responsible for assigning top-level domains on the internet) has developed mechanisms to protect trademark rights.
The central organisation for this is the Trademark Clearinghouse ("TMCH"), which offers trademark owners the opportunity to have their trademarks entered in a centralised database. Inclusion of a trademark in the TMCH database enables preferential participation in "sunrise phases" for newly created gTLDs, for example, but also additional legal protection options such as notification of certain third-party domain registrations or participation in rapid dispute resolution mechanisms.
Originally published 14 November 2023
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
