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Perform, an Irish company selling nutritional supplements, enlisted our help to protect their trade mark in the UK. We checked the register and found three existing trade marks with the same name but different styles of presentation. So we concluded that there was room for a fourth registration and put together the application.
The Trade Mark Registry identified the existing trade marks and notified all of the owners about our application. The owner of the third and most recent trade mark objected to Perform's application, saying they had an earlier right. The other two owners did not raise any objection…
We examined the two earliest trade marks. The first one had a very different visual style and a distinguishable field of business. The second one was for a similar business to Perform. However, it was a business started during the 2020 lockdown that had since closed, but the trade mark remained registered.
So we contacted the owners of the second trade mark, who confirmed they no longer had an interest in retaining the trade mark. We negotiated a purchase of this trade mark, and the registration was transferred to Perform. Then we informed the third trade mark owner that in fact it was our client who held the earlier right, not them.
This led to an agreement between the two parties on the usage styles, supplement types, and markets to be supplied. Our client was pleased that they had been able to register and use their trade mark and that the cost of the solution to this challenge was lower than had they had to defend the application in court.
The business owner who had objected seemed relieved that he was able to continue using his name and trade mark.
This case highlights why businesses and individuals making trade mark applications and submitting objections to applications should seek professional advice. It is not always as straightforward as it might seem, and if you are unfamiliar with the nuances of the trade mark application system you may encounter unexpected (and expensive) problems.
Changes in the processes of the UK Trade Mark Registry* have shifted the responsibility from examiners in the registry onto existing trade mark owners, which means that trade mark owners should ensure they are monitoring their trade marks and any relevant applications.
The owner of the third trade mark had filed their application via the EU, meaning that it bypassed the UK Registry’s notification process. They seemingly hadn’t reviewed the previous two trade marks to determine if revocation or acquisition was necessary, leading to them making an objection against our (fourth) application without having first checked and tidied up the earlier trade marks.
*When filing a trade mark application, it used to be that there were two checks done – whether the mark is distinctive, and whether someone already has that trade mark (or a similar one) in a similar business. In 2007, the Registry made significant changes to their process in the light of the impact that integration into the EU trade marks system was having on the UK. They stopped checking for earlier trade marks that might conflict with a new application, relying instead on a notification to owners of earlier trade marks of a possible conflict. We’re still doing this, although following Brexit we could easily take that responsibility (and cost) off trade mark owners and put the onus on applicants to show that their proposed trade mark is clear of existing rights.
