Defensive trademarks are sometimes the subject of discussion. Should trademark law be used in order to maximize protection, while often there is no intention to use the trademark as filed? Defensive trademarks are rewarding though, especially in Europe where the scope of protection seems to be diminishing. And the first five years (in the EU), you do have full protection for the trademark in question, which can make life easier. So, why not use all possibilities trademark law is giving you?
Defensive trademarks are especially interesting in case of combined trademarks like FACEBOOK and family names names like CALVIN KLEIN. The problem with these trademarks is that the scope of protection concerns the whole trademark. For example Calvin Klein: the trademark protects this combination while prenames tend to be somewhat overlooked in the overall impression. Nevertheless, trademarks who share the same prename may not constitute confusion but are diluting.
In this respect, CALVIN KLEIN filed an opposition against the trademark CALVIN LUCK. The outcome of the assessment of the similarity between CALVIN KLEIN against CALVIN LUCK is rather unsure. But CALVIN KLEIN also has registered the trademark CALVIN, and that assessment is much easier: OHIM ruled that these trademarks are similar. A crucial registration as the claim on enlarged scope of protection of the trademark was dismissed due to insufficient evidence.
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“Trademark protection gives freedom to do business.”