What Should You Do If Someone Else Is Using Your Trade Mark?
Someone is using your trade mark.
How dare they?
You have spent a great deal of time, money, and energy building up your brand and protecting it, and now someone has come along to try and ride on your coattails.
It’s time to take action before you miss the boat.
How to stop someone using your trade mark
It’s time to take action, and you have two options at your disposal, one of which is a non-legal action. You might think what is point in that? But the third-party observation advises the UKIPO they accepted an application in error. If it’s accepted, it can be a cost-effective way of protecting your brand. Although it comes with a caveat: because it’s a non-legal course of action the UKIPO don’t have to act on it.
If you don’t like the sound of that, you can opt for the opposition to a trade mark (also known as a TM7). This one is a legal action and, if your case is proven, allows you to stop the offending trade mark from being registered (there is also a fast track opposition process).
So, what’s next?
Why are you opposing the application?
If you’ve read some of our other articles, you’ll know by now that trade mark law is never as easy as it seems at first glance.
By opting for issuing a TM7, you have to define the grounds for your opposition. That means whether it’s absolute (the mark is too generic, descriptive or non-distinctive), or relative (you own an existing trade mark that the new one will conflict with).
To add further complications, an objection on absolute grounds can be made by anyone, but only the owner of the earlier trade mark can object on relative grounds.
Right, now that’s got the complicated bit over with, let’s look at filing your objection.
Filing your TM7A
Even when you’ve decided to go down the legal route, there is still a chance that things can be settled informally. Before filing your opposition, write to the applicant and see if they are open to changing their application in some way.
If that fails you have two months (three if it’s a EUIPO application) to take action, which is extended when you file your TM7A, which is called a ‘Notice of threatened opposition.’
Before you think this sounds all very straightforward so you might as well get on with it yourself, think again. Even though the TM7A doesn’t commit you to oppose the application, it’s vital you only submit one if you are serious.
As one of your company’s primary assets, it’s crucial you don’t get this wrong. Missing your filing deadline could cause you a severe headache.
What happens if you miss your chance to oppose the application?
If you miss your deadlines (either through your negligence or because you completed your form incorrectly and didn’t have time to refile), there are no second chances. The trade mark will go through the registration process. If that is going to cause your brand serious trouble, your only potential recourse is to file an invalidity action (based on your prior right). Of course, that process is complicated because the registration of the new mark carries with it a presumption of validity and it’s down to you to prove otherwise.
Any aspect of the law is complicated, especially that which relates to trade marks. If you want to make sure your brand is protected call in the professionals to help. A specialist trade mark attorney is worth their weight in gold.BACK TO BLOG