When not to file a trade mark application

The issue

As a rule, it is a good idea for businesses to register their trade marks, as having that registration is the best way to protect their position if competitors come along and adopt similar trade marks, whether deliberately or inadvertently. However, where trade mark applications are filed without proper care or planning, applicants may find themselves facing unnecessary problems, potentially triggering costly disputes and disruptive rebrands.

Why might this happen?

Neither the UK nor the EU Intellectual Property Offices will reject a trade mark application on the basis that it conflicts with existing rights (so-called ‘relative grounds' for refusal), this will only happen where the application fails to satisfy other registrability criteria, for example, the trade mark is descriptive or misleading (the so-called ‘absolute grounds’). The UK IPO carries out a search of the UK trade marks register as part of its examination process, but even if conflicting trade marks are identifed, the application will not be blocked. Instead, the UK IPO notifies the applicant of the conflicting rights, giving them one opportunity to persuade the examiner that there is no conflict, for example, by amending the scope of the application, or arguing that there is no similarity. However, the applicant does not have to do this (or they may fail to persuade the UK IPO that the marks do not conflict), in which case the UK IPO will notify the proprietors of the earlier rights, alerting them to publication of the trade mark application, and therefore to the possibility of filing an opposition. Many trade mark owners actively monitor new applications by way of a trade mark watch, which is typically more thorough than the UK IPO search. What this all means is that filing a trade mark application can have the effect of bringing your new trade mark to the attention of earlier rights holders who may not only object to your registration of your mark, but also your use of it. Tales of businesses who have filed a trade mark application on the assumption that this would protect their rights, only to be forced to stop using their trade mark and re-brand just as their business was developing, are sadly not uncommon.

The risks can be greatest for those businesses that are already using a trade mark, and are heavily committed to it. Rebranding can incur substantial costs - and cause significant disruption - and where an action for trade mark infringement is brought, there will also be legal costs and possible damages. A similar situation can arise with brand expansion, where the owner of an established brand seeking to enter new product or geographical markets may find itself blocked by existing conflicting brands. As international organisations often seek to have consistent global branding, this may lead to an unavoidable global re-brand.

How can these risks be reduced?

The value of carrying out trade mark searches before committing to a new trade mark is well understood. Where a business is already using a trade mark, the tendency is to assume that searches are not needed, but this is not so, as obstacles may exist to the expansion of an existing trade mark into new markets, be they geographical or product-based. Where obstacles are identified, a number of actions can be taken.

First, check if the earlier conflicting rights are likely to be enforcable, and whether there is a genuine risk of them blocking the use or registration of the proposed new trade mark. A registered trade mark will be vulnerable to cancellation on the basis of non-use if it has not been used in commerce for a defined period of time (five years in both the UK and EU, three in China). If there has been no use, perhaps because a product has been discontinued, there may be a lower risk of conflict even where the registration is still enforceable.

Secondly, it may be appropriate to contact earlier rights owners to request permission to use their mark, to offer to purchase the registration, or take a licence.

Thirdly, sometimes the only practical option is to revise the planned use of the mark, for example, by adding matter to, or removing matter from, the trade mark in order to to distance it from existing rights, and reduce the risk of a dispute.

If you believe that a dispute might be triggered, filing the new trade mark application with a limited specification of goods or services, with the deliberate intention of avoiding any overlap, can reassure would-be challengers that there is little or no risk of commercial confusion. While this is not always successful, applicants who file for very broad trade mark protection do tend to encounter more objections and oppositions.

The risk of trade mark infringement should not be ignored, as it often runs alongside a potential conflict between trade mark applications and registrations. In this case, ignoring the risk is inadvisable. Continuing to use the trade mark may lead to an increasing liability for damages, while requesting consent or a licence risks provoking a legal letter by return. In such circumstances, the risk should be thoroughly assessed and, where appropriate, steps taken to pre-emptively re-brand.

In all cases, it is important to think carefully before deciding on a trade mark filing strategy.

When should you file an application?

Ideally, new trade mark protection will be in place in time for launch, which means that new applications should be filed several months before launch to allow time to overcome any oppositions or disputes, or even re-brand if necessary.

To minimise the risk of filing a trade mark application that creates, rather than solves, problems, take time to consider all the circumstances, file before you are committed to the mark, and take advice from a Chartered Trade Mark Attorney. Once a valid trade mark registration is in place, you have a useful and potentially very valuable asset; however, the trade mark application process is not always straightforward, and inexperienced applicants may well run into problems that could have been avoided with more care and knowledge.

If you would like advice on trade mark filing strategy, please do not hesitate to contact us.