Do you have to defend a trade mark? Your guide to defence of a trade mark

Photo by Erik Mclean on Unsplash

Words by Dr Martin Douglas Hendry

What is a trade mark?

A trade mark is a symbol, word, or phrase that is used to distinguish the goods or services of one company from those of another. In the UK, trade marks are governed by the Trade Marks Act 1994 and are registered with the UK Intellectual Property Office (UKIPO). It is important for businesses to protect their trade marks in order to prevent others from using similar marks and to prevent consumer confusion.

How to register a trade mark

Obtaining a trade mark in the UK is a relatively straightforward process, but it does have certain requirements. To register a trade mark, the mark must be distinctive and must not be similar to any existing trade marks. Additionally, the mark must not be descriptive of the goods or services it is associated with or be a generic term. The process of registering a trade mark typically takes around 6 months and costs around £200 per trade mark in official fees.

What happens once registered

Once a trade mark is registered, it is important to keep an eye out for potential challenges to the mark. A trade mark can be challenged or opposed by another person or company if they believe it is too similar to an existing trade mark, if it is descriptive, or if it is a generic term. If a trade mark is challenged, the owner of the mark will need to defend it in order to keep the registration valid.

Defending a trade mark: The process

The process for defending a trade mark in the UK begins with a notice of opposition from the challenging party. This notice will state the grounds for the opposition and the trade mark owner will then have a chance to respond. If the parties are unable to reach a settlement, the case will proceed to a hearing before the UKIPO. The costs associated with defending a trade mark can vary depending on the complexity of the case but can be substantial.

Challenges that may occur

Some common challenges to trade marks include similarity to existing trade marks, descriptiveness of the mark, genericness of the mark and non-use of the mark. The similarity of trade marks is a common issue that arises when another party believes that your trade mark is too similar to their own. Descriptiveness is another common issue that arises when a trade mark is too closely associated with the goods or services it is associated with. Genericness is a more specific problem that arises when the trade mark is a commonly used term in the industry. Non-use of the mark is a problem that arises when the trade mark has not been used in a significant period of time.

Should you defend a trade mark?

The decision of whether to defend a trade mark or not can be a complex one and is often dependent on a variety of factors. One of the main considerations when deciding whether to defend a trade mark is the cost and resources required to do so. Defending a trade mark can be a time-consuming and expensive process, especially if the case goes to court. If the trade mark in question is not a significant source of income for the business or the costs of defending it outweigh the potential benefits, it may not be worth pursuing.

Another important consideration when deciding whether to defend a trade mark is the strength and distinctiveness of the mark. If the trade mark is weak or not distinctive, it may be difficult to successfully defend it. Additionally, it is important to consider the likelihood of winning the case, as well as any potential negative impact on the business if the trade mark is lost.

Furthermore, it's important to consider the impact of not defending a trade mark. It could lead to the dilution of the brand and could lead to lost revenue as well as legal disputes. If a trade mark is not defended and is allowed to be used by another party, it may weaken the business's reputation and cause confusion among consumers.

In conclusion, the decision of whether to defend a trade mark or not is a complex one that should be carefully evaluated based on the specific circumstances of the case and the potential costs and benefits of doing so. A legal consultation with a trade mark lawyer may be helpful to weigh the options and make an informed decision.

Conclusion

In conclusion, it is important for businesses to protect their trade marks in order to prevent others from using similar marks and to prevent consumer confusion. The process of registering a trade mark is relatively straightforward, but it does have certain requirements. Once a trade mark is registered, it is important to keep an eye out for potential challenges to the mark. The costs associated with defending a trade mark can vary depending on the complexity of the case but can be substantial. If you need assistance with registering or defending a trade mark, it is best to contact a legal professional who can guide you through the process.

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