• Intellectual property
  • June 25, 2021

Trademark Disputes: What You Need To Know

Obviously, trademark disputes aren’t ever something anybody wants to get involved in but sometimes they can be unavoidable. Knowing how they might arise, and what you can do to help both prevent and deal with them when they do, puts you on a stronger footing.

Unfortunately one of the inevitabilities of applying for registered trademark protection is that, as part of the application process, your mark will be published online for all to see. That publication period (which generally lasts a few months), gives third parties with earlier rights in an identical or similar mark the chance to oppose your trademark application before it registers. The trademark office itself may also notify prior rightsholders of the publication of your application if they deem an earlier trademark to be confusingly similar to yours. 

Before launching into opposition or cancellation action, often a business alleging trademark infringement will start by sending a Cease & Desist letter. This puts the infringing party on notice, requesting them to stop the use of the identical/similar mark and may also seek financial compensation. Sometimes there will be an opportunity to negotiate and come to a settlement with the other side. That might be in the form of agreeing the terms of a licence or ‘co-existence agreement’ where you agree to settle the dispute on the basis that one/both parties can continue using their mark(s), as long as they only do it in certain ways and perhaps only in particular territories. Settlement on this basis is more likely if both parties operate in different business areas.

If you’re thinking about claiming someone of trademark infringement or opposing their trademark application,  be aware that one of the common responses is for that party to turn the tables on you and try to counterclaim that your trademark should in fact be cancelled or revoked. That won’t always be possible of course, but they might try to argue that your trademark is perhaps too descriptive, or misleading, or hasn’t been continuously used in the last 5 years (which would make it liable to cancellation). Or they may even be able to show that they had rights in that mark before you applied for your mark and that your mark should therefore never have been registered. So it is worth taking advice from an Intellectual Property specialist just to check that any claim you want to make has legs and won’t end up exposing you.

If you oppose somebody’s trademark and you lose, be aware that you’re likely to have to pay towards that person’s costs, which can end up running into the thousands. So again, you need to be careful before launching into infringement action to weigh up the pros, cons and risks and be confident about the strength of your case before taking action.

Some of our top tips to help avoid trademark disputes is to make sure you;

a) search the trademark database before adopting a new mark 

b) don’t leave it too late to register your own mark. 

Trademarks generally work on a first-come-first-served basis, it can and often does cost ten times as much or more to deal with the fall-out from failure to protect a brand in the first place as it would have cost to simply register the mark initially. Someone else might start using the name, get trademark protection for it and then they can take legal action to stop you from using your name, force you to change your branding, give up your domain names, your social media accounts and everything you’ve invested money in to get up and running.

Do you have more questions about trade mark infringement?

Trademark law can be difficult to navigate. Our expert Intellectual Property lawyers can assist you with your trade mark registration in order to avoid any intellectual property disputes.

Seeking trademark advice from an expert trademark solicitor is usually the first step to understanding trademark protection within the context of your brand. The trademark solicitors at LawBite can help with all aspects of this process. At the pre-filing stage, this includes advising which of your brand elements can be registered, whether your marks are already taken, which classes you should cover and carefully drafting a bespoke specification to reflect your business model. We then file the application(s) on your behalf and monitor the  entire process through to registration, liaising with the trademark office as and when necessary.

The trademark advice we offer at LawBite also extends to handling third-party trademark infringement claims, whether this is defending your trade mark in the context of opposition proceedings or pursuing somebody who is breaching your own rights. This includes expert business legal advice and recommendations about strategy and negotiations, as well as drafting pre-action correspondence and formal statements of case.

LawBite offers very competitive trademark legal advice and packages. Our trademark solicitors can recommend the most cost-effective way of achieving trademark registration and unlike most other firms, our fees are fixed regardless of the number of trademark classes you choose to protect.

Our lawyers will:

  • Identify your potential trademarks and get them registered.
  • Check trademark registers to make sure that you are not committing a trademark infringement.
  • Show you how to commercialise the value of your trademark.

Our trademark products:

UK Trademark (£395+VAT)

  • Identical mark search for the UK
  • Full design and draft of detailed specification
  • Class advice and recommendations
  • Application drafted and filed for up to 5 classes
  • Ongoing monitoring and communication with the IPO to full registration - including amendments*
  • Trademark registration certificate provided
  • IPO Fees charged separately

EU Trademark (£695 + VAT)

  • Identical mark search across the EU
  • Full design and draft of detailed specification
  • Class advice and recommendations
  • Application drafted and filed for up to 5 classes
  • Ongoing monitoring and communication with EUIPO - including amendments*
  • Trademark registration certificate provided
  • EUIPO fees & third party agent filing fees charged separately

Journey further

In closing

Nothing in this article constitutes legal advice on which you should rely. The article is provided for general information purposes only. Professional legal advice should always be sought before taking any action relating to or relying on the content of this article. Our Platform Terms of Use apply to this article.

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