Summary
- Registration does not defend itself: you need to monitor the Trade Marks Journal, or pay a watching service to do it, so that conflicting applications surface while opposition is still available.
- You have two months from publication to oppose an application, extendable to three on request, and opposition is far cheaper than acting after a conflicting mark has registered and entered use.
- Where a conflicting mark has already registered, invalidation has no strict time limit, but acquiescence can bar you if you knew of five years of use and did nothing.
- Infringement runs from a cease and desist letter through to proceedings in the Intellectual Property Enterprise Court or the High Court, with injunctions, damages or an account of profits available.
- An established mark is itself exposed: an applicant you oppose can put you to proof of use once your mark is more than five years old, and a new entrant can seek revocation for non-use.
Tips for Businesses
Set up a watching service rather than relying on someone noticing a competitor’s branding. Diarise the two-month opposition window the moment a conflicting application publishes. Keep dated evidence of use for every class you hold, because you will need it the first time you oppose anything. Take advice before sending a cease and desist letter.
A registered trade mark is a right you have to exercise, not one that defends itself. New applications are published in the Trade Marks Journal every week, and nothing in the system alerts you when one of them encroaches on your brand. The cheapest point to act is during the two-month opposition window after publication. Once a conflicting mark registers and the business behind it starts trading, your options narrow and your costs rise. There is a second reason to act early that established rights holders often overlook. The longer a mark sits on the register, the more exposed it becomes to challenges of its own. This article explains how to monitor the register, how opposition and invalidation work, what infringement proceedings involve, and how proof of use can turn a challenge back on you.
Why Established Trade Marks Face Challenges
The trade mark register is not static. New applications are filed with the Intellectual Property Office (IPO) every day, and not all of them will be sufficiently distinct from existing marks. In some cases, new entrants may attempt to free-ride on the goodwill of an established brand by adopting similar branding. In others, the similarity may be unintentional, but the commercial impact can be just as damaging. Confusion among consumers, dilution of brand identity, and reputational harm are all real risks when a similar mark enters your market.
Monitoring the Register
The first line of defence is awareness. The IPO publishes new trade mark applications in its Trade Marks Journal, and rights holders can monitor this for conflicting applications. Many businesses use professional watching services that automatically flag new applications that are similar to their registered marks. Acting early at the application stage is usually more cost-effective than waiting until a conflicting mark is registered and used.
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Opposing a Trade Mark Application
If you identify a new application that conflicts with your registered trade mark, you have two months from the date it is published in the Trade Marks Journal to file an opposition with the IPO. This period can be extended by a further month on request. An opposition is a formal challenge in which you set out the grounds on which you believe the application should be refused.
Common grounds for opposition include:
- the applied-for mark is identical or similar to your registered mark and covers identical or similar goods or services, creating a likelihood of confusion;
- the applied-for mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of your mark (relevant where your mark has a strong reputation); or
- the application was made in bad faith.
Challenging a Registered Mark
If a conflicting mark has already been registered, you can apply to have it invalidated. An invalidation action asks the IPO to declare that it should not have registered the mark. The grounds are similar to those used in opposition proceedings. There is no strict deadline for filing an invalidation action. However, the IPO may consider any delay when assessing the application.
Alternatively, if the registered mark has been in use for five years or more, you may face a defence of acquiescence if you were aware of its use and took no action. This underscores the importance of acting promptly when you identify a conflicting mark.
“Founders often fall in love with a name that explains the product perfectly, and that clarity is exactly why the IPO refuses it. The more obvious a name feels to your customers, the harder it usually is to register. Choose the name that needs explaining, not the one that explains itself.”
Infringement Proceedings
If a business uses a mark that infringes your registered trade mark, you may bring infringement proceedings. The usual first step is a cease and desist letter. This puts the other party on notice and gives them a chance to stop without litigation. Many disputes are resolved at this stage.
If you cannot resolve the matter, you may start proceedings in the Intellectual Property Enterprise Court (IPEC). IPEC handles lower-value IP disputes and caps recoverable costs. You may instead use the High Court for higher-value or more complex cases. Available remedies include injunctions, damages or an account of profits. The court may also order the destruction of infringing goods or materials.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Key Takeaways
Protecting your trade mark does not end with registration. You also need to watch for potential conflicts and enforce your rights, such as:
- Acting promptly: Delays can weaken your position and, in some cases, prevent you from bringing a challenge.
- Monitoring new applications: Check the IPO’s Trade Marks Journal regularly or use a watching service to identify potentially conflicting applications early.
- Meeting opposition deadlines: You have two months from publication to oppose an application. This period can be extended to three months.
- Challenging conflicting registrations: If a mark should not have been registered, you may be able to challenge it through invalidation proceedings.
- Responding to infringement: A cease and desist letter may resolve the issue. Where necessary, you can bring proceedings in the Intellectual Property Enterprise Court (IPEC) or the High Court.
LegalVision provides ongoing legal support for all businesses through our fixed-fee legal membership. Our experienced intellectual property lawyers help businesses manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 0808 196 8584 or visit our membership page.
Frequently Asked Questions
What is the difference between opposing a trade mark and invalidating one?
Opposition is a challenge made before a mark is registered, during the IPO’s publication window. Invalidation is a challenge made after registration, seeking a declaration that the mark should never have been registered.
Can I challenge a trade mark that is similar but not identical to mine?
Yes. You do not need to show the marks are identical. A likelihood of consumer confusion can support opposition or infringement action. This depends on the similarity between the marks and the goods or services they cover.
Do I need to go to court to resolve a trade mark dispute?
Not necessarily. Many disputes are resolved through correspondence or negotiation without litigation. The IPO also offers a mediation service for trade mark disputes, which can be a quicker and more cost-effective route to resolution than court proceedings.
Can my own registration be attacked if I challenge someone else?
Yes. If your mark has been registered for more than five years, an applicant you oppose can require you to prove genuine use of it. A new entrant can also apply to revoke your registration for non-use. Keep dated evidence of use for every class you hold.
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