Enforcement

What Is Enforcement?

Enforcement refers to the efforts of a brand owner to protect its trademark rights. Maintaining and growing brand value strongly depend on the effective enforcement of the underlying trademark rights against infringement and depreciation.

Enforcement activities may include:

• use of a watch service to monitor trademark applications by third parties
• opposition proceedings against pending trademark applications by third parties
• cancellation actions filed against third-party registrations
• cease-and-desist letters
• infringement and dilution litigation
• other means to prevent the registration or use of trademarks that are confusingly similar to the brand owner’s marks

Our Position

We have developed a variety of policies to encourage and support the harmonization of enforcement mechanisms and practices in jurisdictions worldwide. These include specific recommendations for administrative proceedings, such as opposition and cancellation proceedings, as well as judicial standards of procedure in intellectual property cases.

• Oppositions
  • Our Board resolutions regarding opposition proceedings include a resolution to introduce opposition proceedings in jurisdictions that do not yet have them, as well as resolutions recommending extensions, deferrals, and suspensions in opposition proceedings, and guidelines for the determination of those who may decide opposition proceedings.
• Cancellations
  • Our Board resolutions regarding cancellation procedures include resolving that such proceedings be permitted for partial non-use cancellation and that jurisdictions should not require claimants to prove standing in non-use cancellation actions.
• Preliminary injunctions
  • Preliminary injunctions are an important tool in trademark enforcement and should be available to right holders in all jurisdictions.
• Bad faith
  • Recognizing the seriousness of bad-faith filings worldwide, we’ve adopted a Board resolution recommending that bad faith be a basis for opposition proceedings.