Owners of UK trade mark registrations are entitled to prevent the use and registration of the mark registered in relation to the goods and services covered by the registration. Where there is a likelihood of confusion they may also prevent use or registration of a similar mark in relation to the same or similar goods or services.
Additionally, where the trade mark registration possesses a reputation it may be possible to prevent third party use or registration of the mark (or a similar mark) for goods or services which are not similar upon the basis that there is a likelihood of confusion, or where the use of the later mark is likely to cause detriment to or to take advantage of that reputation.
If you become aware that a third party is seeking to register a conflicting mark or that it is infringing your trade mark, it is important that you prevent this by enforcing your rights. Your failure to do so could result in dilution of your rights and even lead to the restriction of your commercial field of operations.
The UK intellectual property office does not refuse to register a trade mark application simply because the UK register of trade marks contains earlier marks with which it appears to conflict.
However, it does notify UK trade mark owners of the publication of later identical or similar marks so that they may oppose registration during the 2 month period following publication.
Similar notifications are sent out by the EU intellectual property office to owners of EU trade marks so that they might oppose during the 3 month period following publication. It is important that these notifications are carefully evaluated and, where appropriate, acted upon.
Once an opposition is filed there is an opportunity for the trade mark applicant to file a defence and for both parties to file evidence and argument before a decision is made on the papers or after an oral hearing. 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.
It is possible to attack the validity of a registered trade mark upon the basis of your earlier trade mark registration, or other unregistered rights which are protected by virtue of the laws of passing-off, copyright or design right. Invalidity proceedings are similar in form to oppositions but filing and prosecuting these actions takes particular care since it will not be possible to re-litigate the issue before the UK IPO Tribunal if the action is ultimately lost.
If you need assistance to bring opposition or invalidity proceedings contact us here.
How do I stop a trade mark infringement?
If you need to stop unauthorised third party use of your trade mark then it is possible to take proceedings for trade mark infringement before the High Court or Enterprise Court (depending upon the value and importance of your claim).
If successful at trial, infringement proceedings could result in your obtaining an injunction (to stop the infringement), together with an award of damages or an account of profits, destruction or delivery up of infringing goods or business papers, and a substantial contribution to your legal costs.
If you become aware of unauthorised third party use of your registered trade mark you should immediately obtain specialist legal advice to assess the merits of your case and to advise upon the best means of enforcement.
Letters Before Action
Court proceedings are usually preceded by sending a letter before action setting out the alleged infringement and your demands for redress. Letters before action are powerful tools which are often effective at stopping the particular instance of infringement without the necessity for further action. However, it is important to note that there is legislation in the UK which makes groundless threats actionable. It is also necessary to comply with the Pre-Action Protocol for IP proceedings and failure to do so can give rise to sanctions. Accordingly, you should always seek professional legal advice before sending a letter before action to a third party.
Settlement and Dispute Resolution
The courts actively encourage settlement and resolution of IP disputes without resort to court proceedings. Both before and after issuing legal proceedings there exists a continuing opportunity to negotiate with the opposite party and to settle the matter on the basis most beneficial to your business.
Enforcing Unregistered Rights
The UK is a territory which recognises unregistered trade marks, as well as other unregistered rights such as design and database right and copyright. All these rights can be used in a focused manner to protect your brands. For example:
- where you have built up valuable business goodwill in a business or brand name you may be able to use this unregistered right to prevent unauthorised third party use by means of an action in passing-off.
- unregistered rights can also enable you to oppose or to seek to invalidate later trade marks.
However, it is generally more complex and more expensive to use unregistered rights as a means of enforcement. It is also vital to ensure that the unregistered right you wish to rely upon is sufficiently identified and that there is sufficient evidence to support the existence of the right before embarking upon enforcement proceedings or sending letters before action based upon such rights.
If you need assistance with enforcing your rights contact us here.