Businesses are entitled to use IP rights to prevent unauthorised third party use or registration and an established business might have built up a substantial portfolio of registered trade marks and designs which can be employed to prevent the market entry of a competitor. In such cases there might be a real commercial conflict of which the newcomer is reckless or simply unaware. However, not all objections or claims of IP infringement have merit: it may be that there is no real risk of confusion, or that the rights you are alleged to have infringed are themselves invalid or revocable for non-use. In some cases it may be that a more established party is making unjustified threats to sue or that you have an unregistered earlier right or defence which entitles your to continue to use or to register your mark.

How do I defend an opposition to my trade mark application?

During the 2 month period after publication of your UK Trade Mark Application you may receive an opposition filed by the owner of an earlier UK Trade Mark Registration or unregistered rights, or a Notice of Intended Opposition which will result in a further period of 1 month to try to settle the objection before formal opposition proceedings are filed.

Opposition proceedings before the UK IPO Tribunal are subject to strict and sometimes non-extendable deadlines so it is vital to obtain specialist legal advice at the earliest stage to enhance your prospects for a successful defence or beneficial settlement with the other side. This is of particular importance if you are already using your mark since successful opposition may be a precursor to proceedings for trade mark infringement. Indeed, threats to oppose are often coupled with threats to sue for trade mark infringement or passing-off.

In particular, it will be necessary to evaluate the rights claimed by the Opponent, especially their scope and validity, to consider the relevant circumstances and advise you:

  • whether there are other reasons why you are entitled to registration;
  • whether it is necessary or desirable to counter attack for invalidity or revocation of the earlier rights claimed; and
  • whether you should negotiate a settlement with the Opponent.

If the dispute cannot be settled at an early stage you will need specialist assistance to prepare and file a defence to opposition, to prepare evidence, and at a later stage to prepare for an oral hearing or a decision on the papers.

Both before and during the opposition process there exists a continuing opportunity to negotiate with the opposite party and to settle the matter on the basis most beneficial to your business. 

If you need assistance to defend an opposition contact us here.

Defend an Invalidity Action

Similar considerations apply to defending an application to invalidate your trade mark registration before the UK IPO. It is important to obtain specialist legal advice at the earliest stage so that your prospects for making a successful defence or reaching a beneficial settlement are not compromised.

Defence to Trade Mark Infringement

Owners of earlier conflicting trade mark registrations may seek to stop you using a trade mark by means of an action for trade mark infringement before the High Court or Enterprise Court (depending upon the value and importance of the claim). If you already possess a UK Trade Mark Registration which covers your use then they will firstly need to invalidate your registration before any infringement action can succeed.

It is also open to owners of unregistered trade marks to seek to prevent your use by means of an action for passing-off where your use damages their business goodwill in the mark.

Depending upon the value and importance of the claim it may be filed in the High Court or the Enterprise Court. Although Enterprise Court proceedings have streamlined procedures compared to those pursued in the High Court, both involve complex issues which require specialist legal advice and assistance and both involve the expenditure of considerable time and money.

Before a claim is filed it is usually preceded by a letter before action in which the Claimant sets out:

  • the earlier rights claimed and the basis of its case against you;
  • its demands – for example, that you stop use and provide legally binding undertakings which might include an undertaking to provide compensation for damages and to reimburse their costs.

It may be that on a proper construction of the matter you have a defence or even that you possess an earlier right which entitles you to continue your use or to mount a counter attack against the Claimant.

Pre-action correspondence is subject to regulation and there are sanctions for failing to comply with the Pre-Action Protocol. Unjustified threats of IP infringement are actionable under the Intellectual Property (Unjustified Threats) Act 2017 and if a party in the UK receives an unjustified threat of infringement of a trade mark, patent or design right, it may be open to them to obtain a declaration that the threats are unjustified and to obtain an injunction against these threats.

Obtaining the right legal advice and assistance at an early stage is key to defending your business in these circumstances. Failure to obtain specialist advice as to your rights at an early stage could result in your providing unduly onerous undertakings or overly generous compensation to the other side or it might result in the filing of a claim against you.

If you need assistance with an allegation of invalidity or trade mark infringement contact us here.

Defend a Non-Use Action

Once your UK or EU Trade Mark Registration is more than 5 years old it is possible for third parties to apply to revoke it upon the basis that it has not been put to genuine use. Non-use actions are often part of a strategy to remove earlier conflicting marks in order to gain entry to a market. Some important points to bear in mind in relation to non-use actions are as follows:

  • they are relatively easy to prepare and file;
  • once filed, the onus lies upon the trade mark owner to file evidence of use (or to provide good reason for non-use) if revocation is to be avoided;
  • even where substantial use of a mark has been made, the owner may still face difficulty providing the type of evidence needed, or providing it in the required format;
  • there may be particular complexity in providing evidence of historical online use or use on social media.

Non-use proceedings are subject to strict deadlines so it is vital to obtain the specialist legal advice your need at the earliest stage to ensure that you do not lose your trade mark registration and your protection to operate in markets of core interest to you. It may also be possible to settle the underlying dispute by means of an amicable co-existence agreement or to take other steps to secure your right to operate in core markets.

If you need assistance to defend a revocation action contact us here.