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When a trade mark application is submitted, the IPO checks the Register of Trade Marks to see whether there are any similar earlier marks. If there are, the applicant and the owner of the earlier trade mark are notified.
If the earlier owner raises an ‘opposition’, then the applicant is allowed 2 months to respond with a defence. It is possible to ask for a deferral (called a “cooling off period”) in which discussions can take place about possible co-existence of the two marks. The owner of the existing trade mark has to agree to this, though, and it puts the opposition on hold for 9 months.
If there is no defence submitted, the IPO refuses the application.
Our client is a company based in the US which is trading in the UK and owns a UK trade mark. An application was submitted for a trade mark which was similar to the one that they hold.
We were notified of this application and lodged an opposition in the Registry.
The applicant didn’t respond until the day of the deadline. When they did respond they phoned and said they’d just found the letter, and asked for a cooling off period. When we asked them what settlement offer they wanted to make, they offered to limit their trading to the UK. Which wouldn’t work for our client, and so we refused this offer.
The applicant was angry and said they’d see us in court; but they didn’t file the defence that was required by the Trade Marks Registry. This meant that the deadline passed, and as no defence was submitted, their trade mark application was refused.
If the applicant had used an IP lawyer to file their application, they would have been reminded about the deadline sooner and would have been able to discuss possible settlements or defences with their legal representative.
From the trade mark holder’s point of view, this shows the benefit of asking Downing IP to submit the original application. It really is as simple as opening all correspondence about the trademarks we have filed for clients (!), recognising which missives are important and have a deadline attached to them, and making a note of those deadlines to ensure that we submit whatever response is needed in a timely manner.
