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Insights

How to challenge a registered trade mark

Posted on 27th January 2020 in Intellectual Property

Posted by

Dan Griffin

Associate and Solicitor
How to challenge a registered trade mark

Invalidation and revocation proceedings before the Intellectual Property Office tribunal

Trade mark registrations are not immune to challenge. Missing the opportunity to oppose an application for a trade mark before it is registered does not mean it is too late to take action because even after registration it can still be possible to cancel or have a registered trade mark declared invalid. The person challenging the trade mark does not always need to own a similar registered trade mark themselves.

When businesses may need to challenge a trade mark

Often businesses become aware of the problem in the following situations:

  • They are about to apply for a registered trade mark in a brand name that has been used for many years without registration but when searching the trade mark register discover that someone else has already registered the name.
  • They apply for a registered trade mark but omit to conduct a thorough search for similar trade marks before applying. The first they learn of the already registered trade mark is a letter from the Intellectual Property Office trade mark examiner stating that if their application proceeds, the examiner will write to the owner of a prior registered trade mark inviting them to oppose the application.
  • They have a registered trade mark but for some reason (such as failing to update their address for service on the register) identify a trade mark in their brand name which somehow managed to be registered. There is no rule against concurrent registration.

In all of the above situations it is too late to use the fast track opposition procedure because the trade mark is already registered.

Registered trade marks can be cancelled

Obtaining registration of a trade mark does not guarantee that it will remain on the register. Any trade mark is vulnerable to proceedings before the Intellectual Property Office tribunal which could result in it being removed from the register. There are a number of grounds for an application but most often these are relied on by the party seeking to challenge:

  • the name or logo is insufficiently distinctive or unclear, for example it describes the product or relates to a geographic location
  • there is a prior registered trade mark in the same or similar name or logo
  • the challenger owns unregistered rights such as copyright or passing off in the name or logo which existed before the trade mark was applied for.
  • the trade mark was applied for in bad faith – for example in brand hijacking situations such as taking control of someone else’s Amazon listing
  • the trade mark has not been used

Let us help you

The Intellectual Property Office tribunal process is relatively cost effective, quick and straightforward compared to court proceedings and if approached carefully, often does not require a hearing. However it is important to get it right because an unsuccessful application will result in the trade mark remaining on the register and an order to pay the defendant’s legal costs. We can guide you through the process. Contact our specialist team on 01392 207020 or email us here

Company & Industry

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