Table of Contents
In Short
- Conduct a thorough trademark search to assess the similarity and potential conflict with existing trademarks.
- Consider negotiating with the trademark owner for coexistence agreements or licensing options.
- Explore rebranding or modifying your trademark to avoid infringement while retaining brand identity.
Tips for Businesses
Before finalising a trademark, conduct comprehensive searches to identify any potential conflicts. If a similar trademark is registered, consult with a trademark professional to explore negotiation or alteration options. Evaluating these strategies early can save time and resources while protecting your brand’s integrity.
Registering a trade mark can become tricky when existing trade marks are similar to yours. If a business uses a similar trade mark, you may find no other option but to develop a new one. You might be liable for registered trade mark infringement if you use a similar trade mark simply without registering it. This article will explain what you should consider before applying for a trade mark and outline your options if a similar one already exists.
How Can I Determine Which Trade Marks are Similar to Mine?
In the UK, you should consider the following when determining whether two trade marks are legally considered similar, including whether an existing trade mark registration could threaten your application:
- are the trade marks themselves similar?;
- are your listed goods/services similar?; and
- in light of your answers to the two questions above, is it possible that a customer may be confused between your brand and the other brand?
To help you answer question 1, consider trade marks similar if they are aurally, conceptually, and visually similar.
Generally, logos (especially those that do not contain any verbal element) require a higher degree of similarity. This is because the visual interpretation of logos is more subjective than words with specific definitions.
What Do I Need to Check Before I Apply for a Trade Mark?
Trade marks are known as territorial rights, meaning that when you register a trade mark in the UK, it is only protected within the UK. Similarly, international trade marks will only protect you in the countries you register them. When you apply, the UK Intellectual Property Office (IPO) will check the trade mark register for existing trade marks that share similarities.
They will inform you if they find a mark that could potentially conflict with yours. If you decide to proceed with your application, the IPO will notify the owner of a similar trade mark about your application.
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How Can I Prove That an Existing Trade Mark is Not Too Similar?
Before you apply to register, it is good to search the trade mark register yourself. Doing so will inform you of any similar brands that already exist. Ultimately, you may decide to amend your application to be more unique. However, if you do not choose to make any changes, you should be prepared to defend your application. You could also negotiate with any potential opponent and/or abandon your application to rebrand.
Your business may argue that your trade mark does not share sufficient similarities with others that already exist. You will also likely need to demonstrate how unlikely it is for anyone to confuse your company and a company with a similar trade mark. If you struggle to prove this, it may indicate that your marks are too similar. In this case, if your application is opposed, this opposition will likely be successful, and your application will not achieve registration. If you find yourself in this position, it is good to seek expert advice.
A chartered trade mark attorney or intellectual property lawyer can advise you of all your options.
Trade Mark Objections
Your application will not be rejected outright in the UK simply because it is too similar to someone else’s. Instead, the IPO will publish your application in the Trade Marks Journal for two months. However, this will only occur provided that your application meets the rest of the requirements for trade mark registration. In some cases, this opposition period may extend to three months. This allows the public to observe trade mark applications and raise objections.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
As noted above, the IPO will inform the owners of any similar trade marks about your application. It is important to note that these owners have the right to formally object to your application. To avoid this hurdle, consider contacting the existing trade mark owner and asking them if they would be willing to consent to your use of a similar brand. If you are unlikely to compete with each other, there is a good chance that they will agree.
Competition
If your brands are likely to compete, it is unlikely that the owner of a similar trade mark will agree to let you use it. This may be because both of your brands operate in the same business area. In this case, it is better to develop a unique brand for which you can successfully register your trade marks. If you decide to use a similar mark, you could be liable for trade mark infringement under UK law.
If the owner of an earlier trade mark does not object in time, then the IPO will go forward with your registration. However, someone may still object once the registration process is complete. This means that your registration is not permanently safe once the IPO approves it. Someone may apply to the IPO to declare your trade mark invalid because it should not have been granted in the first place.
Key Takeaways
If you are concerned that someone has registered a trade mark similar to yours, there are a few options to consider. Firstly, consider whether their brand operates in the same business area. Additionally, consider whether your brands are likely to compete with each other. If they are not, you may approach the owner and see if they would be willing to consent to your registration. If they are likely to compete with you, they may object to your application. In this instance, the best option may be for you to develop a different and more unique trade mark.
Before applying for a trade mark, it is crucial to conduct a thorough search of the trade mark register to identify any existing similar marks. If a conflict arises, you may need to gather evidence to demonstrate that your trade mark is distinct enough to avoid confusion. Consulting with an expert can be beneficial in navigating objections and ensuring your application has the best chance of success. Remember, even if the IPO approves your trade mark, it may still face objections or challenges post-registration.
If you need help registering a trade mark in the UK, our intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.
Frequently Asked Questions
Trade marks are a territorial right. Therefore, if the trade mark already exists in the US but has not been registered in the UK, you may apply to register it yourself.
You can check all existing trade marks at the Intellectual Property Office website. You can also check for new trade mark applications in the Trade Marks Journal.
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