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Trademark infringement, trademark issues and oppositions

Conflicts are never pleasant, but denying the existence of one may lead to greater negative consequences. Whether it concerns similar marks, strongly similar domain names, parallel imports or just fake products being offered online, not responding not only has financial implications but also legal consequences.

Therefore, it is of great importance to take action as soon as possible if there is a danger of trademark infringement. If other companies use trademarks or register very similar ones to yours, it has a number of consequences. It has a financial impact: for example, consumers are redirected online for alternative products, which is lost revenue. And a negative impact on the value of goodwill. Possible negative publications of the other trademark also have an impact on yours because consumers may think that the trademarks are linked to each other. Act timely therefore and prevent that your trademark rights are affected. However, do check first whether you are truthful. Keep in mind that if convicted, the losing party in judicial proceedings bears all costs.

With new trademark applications, it is possible here to formally object via so-called opposition proceedings. Proprietors are automatically and timely (by trademark watch) informed if an objectionable similar mark is applied for. Only when an older proprietor timely opposes, the Benelux authorities will refuse to register the mark. The trademark authorities do not check the registry for similar trademarks. This is a task for the proprietor himself. If no (timely) reaction is taken the trademark will registered and can only be removed by a more expensive (court) procedure.

It could also be that the organization is growing faster than expected. If expansion is to go abroad is wanted, please check first whether the mark is still available (through trademark search) in wanted countries before investments are made. If so, please register the trademark and the associated domain names immediately to avoid conflicts (or rebranding).

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Abcors ABChronicle no 53
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IP Knowledge Quiz Designs

The plaintiff specializes in online sales of children's bicycles. In safeguarding its rights, the company has registered the design of these bicycles under Community Design. Through a multiple design registration, the company secures the rights for 10 new versions of its children's bicycles simultaneously under Community Design. Subsequently, when the defendant introduces a similar bicycle, legal proceedings ensue. Among the various claims, the plaintiff alleges infringement of its design rights, which in turn is contested by the defendant. A design must possess novelty and individual character. The defendant states that the design lacks novelty, as elements of this design are already present in various existing bicycles. Essentially, the defendant's bicycles reproduce these elements, resulting in a lack of individual character. According to the defendant, the community designs are thus invalid. Even If the plaintiff's designs should be valid, the defendant argues that its bicycle deviates sufficiently. The defendant argues that the plaintiff has sought protection for more or less similar designs in the multiple design registration. Apparently, the plaintiff believes that these designs differ enough to create a different overall impression. The defendant's bicycles deviate just as much, thus creating a different overall impression (the so-called doctrine of equivalents argument). The question arises: are the plaintiff's bicycles valid designs despite comprising known aspects from various bicycles, or does the defendant's design exhibit sufficient deviation, thereby enabling the invocation of the doctrine of equivalents concerning the multiple design registration? The court determines that designers of children's bicycles enjoy considerable freedom in their designs. Consequently, if another bicycle lacks significant distinctions, it will quickly evoke a similar overall impression for the informed user, thereby lacking individual character. The comparison is drawn between the new design (the AMIGO bicycles from T.O.M.) and an older existing design (bicycle). To prove that a design is not new, you cannot, as Prijskiller (the defendant) asserts, mosaic together various elements. Therefore, as a defendant, you cannot argue that a design is not new because its characteristics are present in various different products (see also the judgment Karen Millen). If, as a designer, you combine different aspects from multiple designs for the first time into a new product, then this is simply a new and valid design. This is the case with the AMIGO bicycle. The design is upheld as valid. The AMIGO Magic bicycle features a unique tubular frame, rendering it novel. The bicycle is further distinguished by the name MAGIC, the chain guard design, and accessories such as a basket, handlebar streamers, and doll seat. Prijskiller contends that its frame shape differs (being thicker) and that the drawings are positioned differently. Additionally, Prijskiller highlights the distinct color scheme; however, TOM has registered the designs in line drawings, thus disregarding this element in the evaluation. Nevertheless, several similarities are apparent. Both bicycles exhibit an almost identical pattern of butterflies and flowers, positioned nearly identically on the frame. Furthermore, the name MAGIC is depicted in the same font and placement on the chain guard. Consequently, this bicycle fails to evoke a different overall impression for the informed user. The designer's extensive creative freedom in designing children's bicycles means that the differences highlighted by Prijskiller are minor and inconspicuous. Prijskiller's invocation of the doctrine of equivalents is likewise dismissed. The court opines that this case pertains to models concurrently deposited by T.O.M. This circumstance precludes the invocation of the "doctrine of equivalents" because, in compliance with the regulations regarding novelty, individual character, and the grace period, the various models cannot diminish each other's novelty or individual character, nor their scope of protection. In essence, in simultaneous (multiple) deposits, the "doctrine of equivalents" holds little significance. Consequently, these 2Cycle Magic bicycles fail to impart a different overall impression for the informed user. The designer's extensive freedom in designing children's bicycles and the minor differences highlighted by Prijskiller render the infringement claim upheld.
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