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Registering a trade mark can become quite tricky when existing trade marks share similarities to yours. If a business is using 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 decide to 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 trade mark already exists.
What Do I Need to Check Before I Apply for a Trade Mark?
Trade marks are known as territorial rights. This means that when you register a trade mark in the UK, it is only valid in the UK. Similarly, international trade marks will only apply 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. The IPO will search within the classes of goods and services they think your proposed trade mark could potentially fit into. This class may not necessarily be the same as the classes you have applied to register in. The IPO will use their discretion on a case-by-case basis to determine which categories they will search.
If they find a mark that could potentially conflict with yours, they will inform you. If you decide to proceed with your application, the IPO will notify the owner of a similar trade mark about your application, so they are aware.
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 unique. However, if you don’t decide to make any changes, you must gather evidence to overcome any potential objections to your application.
You will need to show that your trade mark does not share sufficient similarities with others that already exist. You must also 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 be a sign that your marks are too similar. In this case, it is unlikely that your application will be successful. If you find yourself in this position, it is good to seek expert advice.
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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 may extend to three months. This allows the public to observe trade mark applications and raise objections.
If your brands are likely to compete with each other, 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 that you will be able to trade mark successfully. 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.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Key Takeaways
If you are concerned that someone has registered a trade mark that is similar to yours, there are a few options to consider. Firstly, you should consider whether their brand operates in the same business area. Additionally, it would help if you consider whether your brands are likely to compete with each other. If they are not, you may wish to 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 for you is 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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