Trademark watch

Illustrative example; names are placeholders and the facts are invented. Company A owns a Swiss registration for watches. The IPI does not refuse new applications because of earlier marks (MSchG Art. 30(2)); only the earlier owner can invoke that ground (Art. 3(3)). A watch alert flags a newly published Swiss registration for MARK B covering jewellery and clocks, and shows it was filed by a Geneva company. Swiss opposition runs for three months from publication of the registration, with the fee due in the same period (Art. 31(2)). That gives Company A's counsel time to compare the marks and goods, approach the filer, or file an opposition. Had nobody been watching, the three months could have passed unnoticed and the opposition route would be gone.

EU. The EUIPO refuses on earlier marks only upon opposition. When a later application is published, it informs owners of earlier EU marks cited in its search report, whether or not the applicant asked for the report, unless those owners opt out. The notice covers EU trade marks and applications only. (EUTMR Arts. 8(1), 43(7), 46(1))

UK. The IPO may search earlier marks at examination. If the applicant proceeds to publication, it notifies holders of earlier UK marks and international registrations designating the UK. Refusal on those grounds still requires the earlier owner to oppose. (Trade Marks (Relative Grounds) Order 2007 arts. 2, 4; UKIPO earlier rights fact sheet)

US. The USPTO itself refuses confusingly similar marks. The window to oppose after publication is short: 30 days, extendable but never beyond 180 days from publication. (15 U.S.C. §§1052(d), 1063(a); 37 CFR 2.102(c))

Switzerland. Earlier marks are not examined at filing, and only the earlier owner can raise them. Because opposition follows registration, the three-month clock starts at publication of the registration. (MSchG Arts. 3(3), 30(2), 31(2))