Brand name disputes occur all too frequently because the trademark registers are increasingly cluttered and it can be difficult to find available names. You may be found using a name for one purpose, but as soon as you use it for another purpose you could actually be facing a brand name dispute.
When you use a name or other brand symbol that someone else claims to have a better title to, or if you find someone using confusingly similar branding to yours and want to challenge it, you have a dispute to deal with.
As it is not widely appreciated that it is necessary to check the trademark registers before using a name, brand name disputes are one of the most common ones we see. For example:
A client secures their desired domain name, sometimes spending thousands of pounds, only to receive notice that its use infringes on someone else’s trademark rights. The rights to use of a name stem from trademarks not from domain or company name availability.
If a domain name is registered that is deemed to be a registration in bad faith, then you could be challenged to return the domain to its rightful owners. For example, even if you have managed to buy a domain name for the name cocacolaclothing.co.uk for your online clothing business it does not mean you are entitled to use that name to sell your line of clothing.
A logo is registered as a UK trademark, but an EU trademark owner believes it infringes on their word trademark and sends a cease and desist letter requiring the withdrawal of all products bearing that logo.
Sometimes someone may simply be using their own name in the business, but this may conflict with a registered trademark. For example, if your name is Paul Smith and you are a fashion designer, you would have a potential dispute to deal with if you decided to set up shop as Paul Smith, given that the trademark rights of the famous designer Paul Smith in fashion and clothing would block you.
Resolving the dispute
Brand name disputes usually take one of three forms:
Either the dispute is in relation to registered trademarks – these may involve opposition to a trademark application or a cease and desist letter threatening court proceedings.
Brand name disputes can also occur if someone is using a name but hasn’t registered it as a trademark. In that case, they would argue ‘passing off’ and possibly threaten court proceedings. Or if you have applied to register a trademark they may either oppose your trademark application based on their earlier rights or apply to cancel your registration if you have already registered the mark.
Domain name disputes – now whether or not the brand name is a registered trademark, and no matter how strong or weak your position may be, the starting point for addressing any brand name dispute is to get specialist advice so as to decide how best to respond.
You may need to change your name and will need to use someone who both understands brands and names. It is so important to use a trademark expert who ‘gets’ branding rather than simply asking a brand agency to help you. Leaving the legal dimension till after the choice has been made could expose you to a further dispute, or leave you with a name that can’t uniquely belong to you.
People 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.
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.
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).
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 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:
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).
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.
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.
There are 5 crucial points to know about trademarks that might change your entire approach to branding and trademark registration. I’ll start by answering the question what is a trademark.
What is a Trademark?
Trademarks are signs used in business to identify products and services in the market place.
Customers can find you by recognising your unique sign identifiers and avoid confusing other providers for you. You might have a variety of identifiers – your name, logo, and tagline being the typical ones.
The single most common one people would recognise you by though, especially if they look for you online, is your name.
So, if you have delivered a good and effective service, and customers want to buy from you again or refer their friends and family to you, the unique identifier they would use to do so will be your name – often not your own personal name, but your business or brand name.
A trademark is a device or tool created by the law that enables consumers to find the products and services they’re interested in. It’s a container of your brand signs, such as your brand name.
Trademarks serve this purpose of being your “badge of origin”. They’re designed to avoid customer confusion which is why a trademark has to be able to function as a unique identifier of your products and services. A trademark therefore tends to be a most valuable asset as you build goodwill.
However, not all signs qualify for exclusive “ownership” as trademarks.
1. Names that Don’t Qualify As A Trademark
Say you provide IT support services and call your business IT Support, you won’t be able to stop another IT support business also referring to themselves as IT support.
The law will not give anyone exclusive rights to use a term like IT Support which all other traders in the industry need to be able to freely use. If you use a sign like that which the law will not give you exclusive rights to, (for example, because the sign is too descriptive and not capable of functioning as a trademark), it means don’t have a unique identifier. Effectively, it’s like not having a name.
Your competitors will be able to use the same sign or similar signs and steal some of your market share – they’ll get business that might have been looking for you. As such it’s like having a leaky colander rather than a leak-proof container for your brand. As such it means your brand value will be reduced, it will be less than it might otherwise have been.
Consumers will be confused when looking for your products and services.
Say you register IT Support with a logo. You will secure trademark registration, yes. However, what you’re essentially getting protection over is the logo, not the name. The law will not accept IT support as functioning as a trademark, so the name element won’t be exclusive to your business. Competitors would also be able to use IT support as a name to identify their business.
As the name is such an important identifier it is important to make sure any name you’re using with your logo is one that is capable of functioning as a trademark. Otherwise, your trademark registration isn’t going to give you the unique rights over the name element of your trademark that you need. You will end up with customer confusion in the marketplace, and this will reduce your profitability as a business.
On the other hand, if you choose a good name that can uniquely belong to you, it will protect you even where someone is simply using a similar name that could be confused with yours by consumers.
A name that can’t function as a trademark won’t even protect you against use of exactly the same name by a competitor. Remember that buyers are not going to be so aware of the look of your logo if they’ve heard of your business from their friends and family as to be able to recognise from the logo on the website that it’s not your business but that of a competitor.
So, don’t be lulled into a false sense of security by a logo trade mark registration. Remember that the primary benefit of a trademark should be to enable you to challenge others who use similar names.
For an IT support business, a better choice of name would be Geek Squad.
However, there can only be one Geek Squad. If someone else is already using the name in the country in which you operate or has registered it as a trademark, you’d need to avoid choosing that name or indeed any name that’s similar to it. Otherwise you’d be infringing on the trade mark rights of the earlier mark.
From this it follows that once you have chosen a name, you MUST check that it’s available to use before adopting it. So legal effectiveness and availability are keys to trademarks.
Domain and company names need to be checked before use too but it’s trademarks that govern rights in names. The fact that a domain name or company name is available to register doesn’t mean you can use the name for any purpose you like. You must only use the name for purposes which don’t conflict with third parties’ existing trademark rights.
This brings me to the next important aspect of trademarks you should be aware of, and that is trademark classes.
2. How Trademark Classifications Work.
Trademarks are registered by reference to specific ‘classes’ or business categories. So you need to think through your plans, and identify the business categories that are relevant to your type of business, and then search and register your mark in those.
Under trademark law names may be shared. So, if your desired name is already registered but for different business activities, you may still be able to use the mark, and co-exist with another business who is using the same name for those different purposes.
For example, Automobile Association and American Airlines are both known as AA; and are both registered trademarks.
Similarly, Polo is registered by three different businesses who use the name for a car, confectionery, and a line of clothing. Another example is Delta which is used both as a brand name for airlines, and for kitchenware and appliances. Dove is a brand of personal care products, but it is also a brand of chocolate
The take away from this is to identify the trademark classes applicable for your brand when searching, and drafting your trademark. The classifications determine the scope of protection you get.
You should seek the widest scope of protection necessary to avoid having someone else build up rights to use a brand sign in the business categories you need
Say you register your name to sell clothing, and then later decide to also sell cosmetics. If someone else is using a similar name to yours for cosmetics, you might infringe on their rights by extending your activities to encompass cosmetics, meaning you would need to find a different name for your cosmetics line.
Don’t ever assume you may go ahead and use your name for any business activity you like. First check whether you’ve registered the name for that business category – cosmetics, in this example, and if not, do a search and register in the new business category before embarking on the new use of your name.
3. Why Register a trademark
The third point to consider about trademarks is why bother registering.
Trademarks are an essential step to securing the exclusive rights your business needs over elements of your brand identity. It’s also the way to retain your brand’s distinctiveness, and to avoid seeing it become generic.
Registering a trademark is the formality you need to go through to secure ownership over your brand sign. As already mentioned, prioritise the name because it’s the primary way people will identify you.
A trademark enables you to stop others using the same mark. By having a registration in place, others are on notice of your rights.
Provided you’ve checked that you can use the name before you register it you get exclusive rights over the name in the business categories in which you register your mark.
It’s important to undertake proper searches because in some jurisdictions like the EU a registration doesn’t protect you against infringement. For example, Skydrive was a registered trademark of Microsoft but wasn’t enough to prevent them from infringing on Sky’s trademark rights. Sky took the matter to court arguing that the names were confusingly similar for cloud services and the court agreed with Sky. So, Microsoft was forced to rebrand to Onedrive.
Some countries such as Spain require names to be registered as the rights in names are based on who first registers a name rather than who uses it first.
In common law countries using a mark without registering it does give the user certain rights, but they are a lot more limited, and costly to enforce than most people realise. If you don’t register your trade mark, you risk losing uniqueness. Something that started out initially as distinctive to your brand can quickly become generic. Had Coca Cola not protected its iconic bottle right from the outset when the bottle was designed for the company, there is no way the bottle would today be uniquely associated with their brand.
A case that demonstrates how precarious it is to rely on mere use of a mark involved two bands that were both called Blue. BBC. One was a current boy band backed by EMI and the other was a 70s rock group known as Blue. That band had a single released in 1977 which got to number 18 in the charts, and had since released 16 singles, seven albums and several remixes. They hadn’t registered a trademark, and as a result, were unable to stop the new boy band using the name BLUE. The take away is to register a trademark. They’re relatively cheap to register, and very expensive to defend or enforce when you haven’t registered one.
The advantages of registering a trademark are significant. Registration considerably reduces the risk of others picking the same brand element for their new products or services because your registration is on the public trademark registers. People are expected to search these registers before choosing names or other brand elements. If you’re not on the register someone else may build rights over the same name or another brand element, and this can lead to messy disputes and unnecessary costs. If you are on the register they are automatically in the wrong for using the same name and it is, therefore, a lot cheaper for you to enforce your rights than if you hadn’t registered a trademark.
4. International trademarks- Strategy
The fourth point about trademarks is that they are territorial.
What this means is that you need to apply to register a trademark in every country in which you want to trade and receive protection. There is no such thing as an international trademark.
There is an international mechanism in place to apply for trademarks which makes applying for trademarks in a number of countries simpler to achieve. It involves filing an application in your home country first and then thanks to various international agreements between countries worldwide you get 6 months’ protection from the date you first file your first application. If you then file an application under the Madrid system you’re able to extend your base home country trademark to countries who are party to the system. You simply file a single application and designate your desired countries and pay the applicable fees.
Unfortunately, if you don’t protect your mark in countries in which you trade, you could find yourself in a situation similar to what happened in Plenty of Fish/Plenty More Fish. Plenty of Fish, a well-established online dating site objected to PlentyMoreFish setting up a rival online dating site in the UK under a similar name. They opposed PlentyMoreFish’s UK trademark application, arguing that PlentyMoreFish was riding off its reputation by setting up the rival dating site. They lost because they couldn’t show that they had UK customers and as they hadn’t protected their brand with an EU trademark they were powerless to stop PlentyMoreFish. That type of situation would never happen within a country as there would be passing off laws and other remedies under local trademark laws which Plenty of Fish could have used to stop PlentyMoreFIsh. However, online it’s possible for this sort of scenario to arise unless you are vigilant about protecting your mark in countries in which you trade. Best to cover off your home market and the important jurisdictions in which you trade.
Prioritise registering in countries in which you do business first. The fact that trademarks are territorial means your registration only protects you in the UK (or EU, if you’ve registered an EU mark).
A UK trademark registration covers the UK only while an EU trademark registration currently covers all 28 European Union countries in a single application, including the UK. However, once the UK leaves the EU after Brexit kicks in, an EU trademark will no longer include the UK. So, you should be considering your strategy carefully if you’re registering your mark now.
It is possible to extend your home country registration to other countries that are not party to the Madrid Protocol by filing directly with an agent in that country. At the time of writing, important countries that are not party to the Madrid include Hong Kong, South Africa and Canada. You don’t need to be a household name, or a huge multinational to aspire to be a brand in the sense of becoming a recognised provider of the products and service you sell. Your brand protection is important.
Oppositions and objections to trademark applications do occur from time to time and that is the fifth and final point to know about trade marks.
The trade mark process involves a review by the trade mark examiners of the registry to which you apply for your trademark. They may have objections.
A typical objection might be that the trademark isn’t properly applied for or to inform you of search results. Many people who file their own trademark applications don’t understand the Examiner’s objections and tend to abandon their applications as a result. If you’re filing your own application make sure you have a resource you can turn to for advice if there are objections to your application, as they’re often quite simple to address.
Once any objections are dealt with and your application is approved it is advertised for what is known as opposition purposes. That’s when existing trademark owners will be alerted to applications that are similar to their registrations so that they can consider whether to oppose any.
Either the IP office notifies them or if they have trademark watch services, they hear from their trade mark agents. They may not necessarily bother to oppose applications. In the UK that doesn’t stop them objecting to a registration several years later. Indeed they often won’t oppose a start up and wait and see whether the start up succeeds before deciding to do so.
The single most valuable information that could literally save some businesses from catastrophic results is to learn from the mistake of Scrabulous.
This was a very successful app on Facebook that provided a Scrabble like game online. It had hundreds of thousands of users when it was stopped overnight almost by a trademark and copyright infringement claim. The business came to the attention of Hasbro, the owners of Scrabble because they filed their own trademark application and Hasbro was notified.
Hasbro considered that the company was infringing on its brand by using a similar name, and were also infringing copyright in the board game. Hasbro applied to Facebook to have the app taken down. Facebook immediately complied. The company lost its successful business on Facebook virtually overnight.
The set back paved the way for Zynga to enter the market with what has become the market leader, Words With Friends. Scrabulous lost its position as first in the market.
The teaching point here is to get an opinion from a good trademark lawyer before filing an application as the application itself would alert others to your activities.
Had Scrabulous sought my advice, I would have counseled them to quietly rebrand rather than apply for a trademark which was bound to bring their infringement to a head.
You can rebrand to new names without any loss of goodwill because you are able to redirect everyone to your new name. However, when you are required to rebrand due to a trademark infringement claim you lose the value of the brand name recognition you have built up. You lose all the brand value you’d built up as the terms of infringement undertakings will not permit you to repoint traffic or tell people that you used to be called X name.
Much better for a business like Scrabulous to have quietly rebranded to a new name, and never come to the attention of Hasbro. They would still be the market leader today probably.
So, the moral of the tale is not to be cavalier about names or get too attached to a name that you may not legitimately lay claim to. It is not possible to choose whatever name you like. At some point, you need to get an opinion on the name you’re using.
A wider lesson from the above is that if you’re running a business where you don’t think a buyer of your business will want to use your name, that doesn’t mean you need not protect your name or need not to bother to make sure you are using a good name.
Your market share is what a trademark protects. If you’re forced to rebrand you can’t keep the value you had generated, and effectively “vanish” overnight. It’s like being back to square one with a totally new name and business. Nobody knows who you are.