Tag Archives: registering trademark

trademark use

Trade Mark Use – When May You Legitimately Use Someone Else’s Trade Mark?

trademark useTo discuss trade mark use let’s start by taking a couple of steps back to understand a bit more about trade marks.

Trade marks are the way to protect your ‘brand”. This word is overused to mean almost whatever a writer wants it to mean, but for current purposes suffice to say “brand” originates from the days when animals were burned with a branding iron to indicate ownership of them.

So to indicate our ownership of our business, or products and services we use various types of “sign”, the most universal one being a name.

The law protects certain names through intellectual property rights known as trademarks.

Names

One major advantage a business has over an individual is in getting to choose its own name.  However, the subject of names is surprisingly complex, and poorly understood, even within the branding industry. The upshot is that many businesses do not give the choice sufficient time, and consideration and get into difficulties later on. They might then have to rebrand to either adjust the name or change it altogether.

Some of the complexity arises because there are various places where people may register names.  It’s possible to register domain names, company names, or to simply adopt a trading name and use it without taking any further action.

Trade marks are more remote to small businesses due to the higher official fees payable to register them. This makes them less accessible than domain and company names. Trade marks also have complexities that make them less suitable to just go register without taking advice.

The upshot is that fewer people tend to register trade marks than register company or domain names.

In this post, I’m not going to cover what types of name are capable of being owned because that’s a large subject. Instead, I want to focus on trade mark use because people are often confused as to what they may or may not do if a name is trade marked.

For example, can they register a similar name? Is it acceptable to refer to a business by its name on your blog? When may you use a hashtag of a brand name? What if someone registers the ‘domain.sucks’ a version of your brand name? What actions might you take?

Such questions all turn on what amounts to trade mark use. There are more questions than space allows for me to answer them but if you’re wondering about use of others’ trade marks in Google Ads then a good starting point for your research are some posts I’ve written such as Should Google be prevented from profiting from cybersquatting?, Louis Vuitton v Google – The AG’s Opinion and Adwords Trademark Policy – Using Competitors’ Names In Adwords

 

Function of a Trade Mark

A trade mark acts as a ‘container” in which the brand value generated in the business is captured. Although it is possible to have trade mark rights without registering a trade mark, unregistered rights are very weak. Unless you have a significant budget to enforce your unregistered rights you effectively don’t have any rights in a name you’re using if you haven’t registered it as a trade mark. It’s less expensive to enforce your rights in a name you have registered.

A trade mark ring fences an area of business in which you have exclusive rights to use your brand name. Competitors can be stopped from using any name that is similar in sound, concept, or visually as they may effectively then be “free riding” on your brand.

This is a big trap for the unwary who think they can just make a slight change of spelling in order to use a similar name. Trade marks give wide protection against confusingly similar names which is why it makes sense to ensure you have a name you can own, that is not descriptive, and that nobody else already owns.

A trade mark is the closest you get to having exclusive rights to use the name for your goods and services. If the name of your business is not capable of being protected through a trade mark registration then it will be very expensive, if not impossible to protect your business name and build up goodwill under that name.

The use of a trade mark in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services is what the law prevents other people doing.

So how might third parties legitimately use your trade mark?

As I mentioned in How To Blog Safely And Avoid Infringement of Intellectual Property the mere reference in your blog to a word trade mark  – such as “BARCLAYS BANK” or “GAP” will not amount to trade mark infringement because names are not protected by copyright law, and trade mark infringement is based on consumer confusion. So, a mere reference to someone’s brand name in your blog is not going to lead to such confusion. The only exception to this is if your use is such that the relevant consumer might be led to believe that your blog is somehow connected to or supported by Barclays Bank.

And as mentioned in this blog about the use of #Hashtags and trade mark infringement, “If a hashtag name constitutes or includes a registered trademark, at first glance it may be sufficient (without registration of a hashtag itself) to bring an infringement claim and establish consumer confusion of a competing use.”… however,  the courts tend to attribute a degree of consumer sophistication to internet users which makes it less rather than more likely that mere use of a hashtag would amount to trade mark infringement. (See Public Impact v Boston Consulting )

And as for using a trade mark name within a domain name such as .sucks as I mentioned in my blog Buying the Suckscom Version of Your Brand where there is simply non-commercial use, then ‘gripe sites’ or protest sites as they are often called, are unlikely to be making trade mark use of a brand.  Therefore, there would be no risk of customer confusion.  In such situations, it is possible to argue there is a ‘legitimate interest’ in using the brand name.

Conclusion

The law aims to keep trade marks free for others to use. Therefore, if you own a mark and do not genuinely make commercial use of it in the country in which your mark is registered for a five year period you will not be able to enforce your rights in that trade mark.

It is not sufficient to just say that the mark has been used, or to just produce a catalogue or a price list showing your mark. There needs to be a clear chain of documentation showing use of the mark in relation to the goods / services for which the mark is registered. So, you might be able to prove use for some goods and services in which you’ve registered your mark but not all of them in which case you will lose your rights over part of your mark.

As they say in trade mark law, Use it or Lose it

trademark

What Does It Mean When You Trademark A Name?

trademarkYour brand name should be a “barrier to entry” – protecting you against the threats that competitors potentially present. Just as patenting an invention gives you a monopoly right over your invention and acts as a barrier to entry against competitors, so names are also important barriers to entry provided they are well chosen. Not any name will cut it. It’s important to take advice on your business or brand name before adopting it.

Your Brand Name Is Like A Physical Plot of Land

Intellectual property rights such as trademarks give you property rights similar to the ownership of physical property. Just as you wouldn’t develop land without first making sure you owned it, so you need to own a name if you’re going to build your brand around it.

There is a similar system in place to that of the land registry, so that you can check ownership rights in a name and register it as a trademark. Although trademarks differ from physical property. They involve complexities. For example, using a similar name is a problem as Scrabulous discovered when it received a cease and desist letter from Scrabble and lost its market leading online word game overnight.

The other day someone said to me, but Shireen we should deal with so many things that we don’t – for example, we should have a shareholder agreement, or we should have a will, we should have employment contracts. He was implying that IP was no different. However, IP like trademarks are completely different. It’s completely wrong to lump trademarking with other legal actions you might put off till it’s convenient. Nor is IP an “insurance” thing either.

IP underpins your very business, and disregarding it is to gamble with your entire business. Would you put off getting title to a piece of land that you were developing by building properties on it? Would you just rely on squatting rights while you developed it? I doubt it. Your brand is no less important.

Don’t Just Use a Name Without Registering it

It’s vital to register a trademark as soon as possible to protect your legal identity before you move on to creating your visual identity.

If there’s a name I myself want to use I won’t even reveal it publicly till I’ve filed an application to register it as a trade mark.  I know what can go wrong. So, if you’re testing an idea and are not ready to spend money on trademarking, I recommend using a temporary name rather than a name you love and which you’ve not protected.

With one of my trademarks, I discovered that a bigger business was using the same name and had even registered it as an EU trade mark. I challenged them on this. And because I had right on my side, I prevailed. In that case, I agreed to sell them my trademark for a 5-figure sum because they really needed to use the name. I wouldn’t have had a leg to stand on if I had simply used the name first without registering it as a trademark. In practice, my only option would have been to rebrand given that they’d registered an EU trade mark. I’d have had no financial support for the costs involved in the rebranding. But when you have legal title to a name you have a strong bargaining position.

Registering Trademarks in The Brexit Era

With Brexit having been in the air these past few years and potentially likely to happen in 2020, it makes more sense for people to apply to register a UK trademark than an EU one.

A UK trademark is a solid foundation for extending your trademark protection to other countries worldwide using the Madrid Protocol system. You could specify the EU in such an application and secure protection in the 27 countries.

Since the UK voted to leave the European Union, it’s become more common for brand owners to use the Madrid Protocol system rather than European Union trademarks. These used to be very popular given that a single application enabled you to protect your mark across the EU’s 28 member states (which includes the UK). But Brexit makes an EU trademark less appealing.

The Madrid Protocol system is the way we extend our clients’ UK trademarks to secure protection for their brand in the EU market, as well as the USA – which is one of the other popular jurisdictions.

If you need help to protect your brand then we are well placed to support you.

opposition uk trademark

Opposition to a UK Trade Mark

opposition uk trademarkPeople often ring us up when they receive a note of threatened opposition to their trade mark application so I thought it might be useful to give an overview of the UK Intellectual Property Office’s opposition process.

 

The UKIPO provides a number of guidance documents about UK oppositions which provide detailed information and advice about all aspects of the opposition process. Rather than duplicating those notes, I want to give you a short overview with weblinks to the relevant UKIPO information.

 

What is an opposition about?

 

All UK trade mark applications are published by the UKIPO for a period of two months (extendible by one month). Publication allows third parties to oppose registration if they consider that the UK mark should not proceed to registration.

 

There are many grounds on which you can oppose the registration. A common reason is that the published mark is confusingly similar to an earlier mark owned by you for the same or similar goods or services.

 

However, you can also oppose a UK mark if you consider that it should not have been accepted by the UKIPO: for example, if the published mark is descriptive of the goods or services or if it was filed by the applicant in bad faith.

 

For more information on the UKIPO’s website about oppositions, click this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section

 

Outline of the opposition procedure:

 

The main steps in a UK opposition are as follows:

  • Usually, you will contact the applicant asking them to withdraw (or limit) their application under threat of filing opposition. Failure to do this may lead to you later losing costs even if you win the opposition.
  • You can oppose a UK mark by filing Notice of Opposition (Form TM7) before the end of the opposition period. This form sets out your opposition claims.
  • The applicant then has 2 months to reply by filing a Defence & Counterstatement. This is usually a denial of your claims.
  • If a Defence & Counterstatement is filed, each side is given 2 months to file its evidence. First, you have 2 months to file evidence in support of your opposition (e.g. evidence of the reputation or use of your earlier mark). Then, the applicant will have 2 months to file evidence in defence of its trade mark application.
  • When the evidence has been filed, the UKIPO asks if either side wants to have an oral Hearing. This is held before a Hearing Officer at which you or your lawyer will have the opportunity to argue your case in person. If neither side requests a hearing, the UKIPO will decide the matter based on the written evidence and legal submissions which have been filed. 
  • Within a few months, the UKIPO will issue its decision, upholding or rejecting the opposition either in full or in part, and awarding costs to the winning side.
  • Either side can appeal the decision of the UKIPO.

 

What happens before filing opposition?

 

If you (or your lawyer) become aware of a UK trade mark application which you believe should not be registered, it is usual to contact the applicant requesting that they voluntarily withdraw their application, in whole or in part. 

 

This is important because if you do not do so and you successfully oppose the mark, the UKIPO may penalise you on costs (i.e. you may forfeit some of the award of costs). You can extend the 2-month opposition period by an additional month if you apply to the UKIPO before the end of the initial 2-month period. This is done by filing a form TM7a for which there are no official fees. For more information on filing a TM7a click on this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.3.

 

Filing a Notice of Opposition:

Notice of Opposition is filed by means of Form TM7. 

The standard official fee is £200. It is also possible to file a Fast-Track Opposition (TM7F) for a reduced official fee of £100 where you rely on limited grounds of opposition. 

Click on this https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.13 for more information about Fast-Track oppositions.

You can claim a number of different grounds of opposition in the standard Notice of Opposition (TM7). These are divided into two broad categories:

A.  – if you believe that the UKIPO should not have accepted the UK mark for registration. This might be because the UK mark is descriptive, generic, a standard term in the trade, or if you believe it was filed in bad faith. These are called Absolute Grounds of opposition.

 

B.  – if you believe that registration of the UK mark would be in conflict with your earlier trade mark rights (or other rights such as a design or copyright). These are called Relative Grounds of opposition.

 

Most oppositions are filed because the opponent is the holder of an earlier trade mark (UK mark, EUTM, or International mark protected in the UK) and registration of the later UK mark would be in conflict with the earlier mark.

The standard grounds (Relative Grounds) on which opposition are normally filed are:

 

  • Likelihood of confusion: you claim that the UK mark is the same or similar to your earlier mark for the same or similar goods/services such that there is a risk of confusion among the relevant consumers.
  • Reputation grounds: you claim that your mark enjoys a reputation in the UK (or the EU if it is a EUTM) and the use of the UK mark would take unfair advantage of or be detrimental to the repute or distinctiveness of your mark.
  • Unregistered marks: if your mark enjoys goodwill and reputation in the UK then regardless of whether it is a registered mark, you can oppose the later UK mark if you can prove that use of the UK mark would be likely to cause consumer confusion (in legal terms, that it would amount to passing-off).

 

For detailed guidance notes on how to complete the Notice of Opposition, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.4.

 

 

What happens after the Notice of Opposition has been filed?

 

The UKIPO will transmit the Notice of Opposition to the applicant who is given 2 months to respond by filing a Defence & Counterstatement (Form TM8). If no defence is filed, the UKIPO will reject the UK mark and costs may be awarded to the opponent.

If the applicant files a Defence & Counterstatement (Form TM8) within the permitted period, the UKIPO will forward it to you.  For more information on the Defence & Counterstatement, click here : https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.6. 

If the parties should decide to enter into discussions after opposition has been filed, it is possible to defer the next steps in the proceedings (including the filing of the Defence & Counterstatement) by requesting a 9 month cooling-off period. This request must be made, by both sides, before the deadline to file the Defence & Counterstatement by filing form TM9C. It is possible to extend the cooling-off period to a maximum of 18 months (if the parties file a TM9E before the end of the 9 month period). For more information about the cooling-off period, click here:  https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.8.

 

  

The evidence rounds in a trade mark opposition:

 

Your evidence:

 

After the applicant has filed its Defence & Counterstatement, the UKIPO will allow you 2 months to file your evidence in support of your opposition. This is factual evidence and not a legal argument.

The most common reasons for filing evidence are: 

 

  • if your earlier mark is registered for more than 5 years, you will normally be required to file proof of evidence of the use of your mark in the UK (or in the EU if your earlier mark is a EUTM). For more information on proof of use, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.10.
  • If you claim a reputation for your mark, you will need to file evidence of your reputation in the UK (or in the EU if your mark is a EUTM). 
  • If you claim that your earlier mark enjoys a goodwill and reputation in the UK, you will need to file evidence of your reputation in the UK. 
  • If you claim that your earlier mark is a well-known mark, you will need to file evidence that it is a well-known mark in the UK.

 

Evidence is usually provided in a Witness Statement which is a statement of the facts which you rely on in your opposition. Supporting evidence (e.g. sample invoices or examples of advertisements) is attached to the Witness Statement as exhibits. Usually, the evidence can be filed with the UKIPO by email (and a copy must be sent to the applicant).

For more detail on the preparation of and the contents of a Witness Statement, click here: https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part32/pd_part32#17.1.

For an example of a Witness Statement (bare-bones only), click here: https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/311793/completedwitnessstatements.pdf.

 

If, however, your earlier mark is a recently-registered trade mark such that your mark is not yet subject to the use requirement (i.e. the requirement to prove use of marks registered for more than 5 years), you may not need to file any evidence because, in these circumstances, you would be simply relying on the legal rights arising from your trade mark registration. In that event, you would not file any factual evidence and, instead, you (or your lawyer) would later just file legal arguments in support of your opposition. 

 

The applicant’s evidence:

 The applicant will be allowed 2 months to file any evidence it wishes in defence of its UK trade mark application. The UKIPO will forward a copy of your evidence to you (or your lawyer).

 

 

The decision of the UKIPO:

 

After both sides have had an opportunity to file evidence, the UKIPO will ask each side if it would like an oral Hearing. If neither side requests an oral hearing, the UKIPO Hearing Officer will decide the case based on the documents and evidence that have been filed in the proceedings and after giving each side the opportunity to file legal submissions. The Hearing Officer allows 2 weeks for filing legal submissions. The decision will normally issue within a period of 2 months thereafter.

 

If either side requests an oral Hearing, the UKIPO will schedule a hearing, which is usually by video conference or a physical hearing in London or Newport. For more complex cases (such as cases with cross-examination), it is common for the parties to be represented by a barrister; otherwise, the parties are usually represented by their solicitor or attorney.

 

Cost awards in a trade mark opposition:

 

  • The general rule is that the winning side is entitled to an award of costs. The UKIPO uses a scale of costs in order to decide how much money to award the winning side. For more detail on the award of costs and the scale of costs awards, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §5.

. 

As a brief summary, the current scale of costs awards provides:

  • preparation of evidence: £500 – £2000
  • preparing a Witness Statement and considering a statement of the other side: £200 – £650.
  • preparing legal submissions: £300 – £500
  • preparing for and attending an oral hearing: up to £1300 per day of the hearing, capped at £3300.

 

Appealing the decision of the UKIPO Hearing Officer:

 

  • Either side can appeal the decision of the UKIPO hearing officer. You can appeal to the Appointed Person or to the High Court. The Appointed Person is a senior lawyer appointed by the Government and their decision is final and unappealable. Alternatively, you can appeal to the High Court, the judgment of which may itself be appealed to a higher court. For more information on appealing a decision of the UKIPO, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §7.

 

So, the starting point if you are facing an opposition is to review this information and then decide whether you want to get an expert involved to give you an opinion and act for you or whether you prefer to withdraw your application and try for a different name.