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What are prior rights and how do they conflict with trade marks?

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Brand protection

A quick guide to the interaction between prior rights and trade marks

Trade marks ("trade marks") help businesses differentiate themselves from the competition. But how do they interact with prior rights?

Prior rights and trade marks: image of a crowd in black and white

Photo by Phil Desforges on Unsplash

Words by Dr Martin Douglas Hendry



What are prior rights?

The term “prior rights” refers to different kinds of pre-existing rights relevant to the current status of a legal subject in question.

Within intellectual property, there are many pre-existing overlapping rights which can (and often do) conflict.

Registering a trade mark grants the registrant rights over a particular brand - but may not stop those who have certain pre-existing rights from continuing to use what they are entitled to (albeit in a limited way). 

Because of this, consideration of prior rights is often very important when assessing intellectual property, as well as understanding the enforceability and scope that a prospective registered right will have.

Prior rights that may impact prospective trade marks include:

  1. Copyright
  2. Unregistered trade marks (via "passing off")
  3. Design rights (e.g. as it relates to trade marks relating to 3D shapes)
  4. Pre-existing trade marks

And more.



Prior rights and trade marks


The purpose of a trade mark is to identify the source of a product or service.

People register trademarks to protect elements of a brand which can include things such as words, graphical elements, shapes, musical jingles and more.

In such circumstances, the brand elements which are sought to be registered may have prior rights associated with them.

For example, if the trade mark that is sought contains someone else’s images or written material (e.g. a slogan taken from a famous book) prior rights in the form of copyright may come into play.

Whilst rare, a trade mark might also infringe design rights if, as a 3D mark it infringes upon unregistered or registered designs.

In addition to this, should a company be using the desired trade mark in the form of an unregistered but established trading name, it may have grounds for a legal position under the tort of passing off.

In these cases, the business with the unregistered brand is typically able to continue trading within the jurisdiction that it has established a reputation in.



How to navigate prior rights in trade mark planning 


It is important to be well aware of prior rights when it comes to planning your brand strategy and the registration of trade marks in particular.

Seeking to enforce a trade mark against 3rd parties who have pre-existing rights in part or in whole can be a drain on time and legal resources. 

For the above reasons, expert legal advice is recommended when registering a trade mark, as well as providing an outline as to the boundaries upon which it can be enforced.

Should you need assistance with this, get in touch with our team today by entering your enquiry into our contact form below.



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For more IP answers, review our FAQ section here.
Disclaimer: This FAQ should not be construed as legal advice on any specific facts. The contents are intended for general informational purposes only. You are urged to consult your own solicitor on any specific legal questions you may have.

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