Following changes introduced this month, you will have to take a more proactive approach in defending your brand, writes Mark Holah, partner at law firm Field Fisher Waterhouse.
Previously, the registry would have refused any trademark application that conflicted with an existing mark. The onus was then on the applicant to defend their case by, for example, demonstrating that there was no likelihood of confusion between the two.
Such refusal “on relative grounds”, as the jargon goes, now simply won’t happen. The registry will inform the applicant of any conflicting marks, but if the applicant decides to go ahead with the registration anyway they are free to do so. So what do you need to do to protect your trademarks?
If you own a UK trademark registration then at this stage you don’t need to do anything. The registry will send you a notification if someone applies for a trademark that conflicts with your rights. The onus is then on you to decide whether to oppose the application or not.
Holders of community trademark registrations, however, will not be notified automatically about conflicting applications unless they ‘opt in’ to the registry’s voluntary notification system. Alternatively, they can employ a watching service, which will cover more of the UK for a lower cost.
If you do decide to fight your corner, it can be an expensive battle. You’ll have to consider the likelihood of success and whether it is commercially viable. Having said that, some legal advisers are offering opposition packages to take into account the effect of the changes on small and medium-sized businesses without a large legal budget.