People often ask me which businesses should think about registering their trade marks. My usual answer is that you should think about it if you’re trading (or intend to) and have a name (or intend to).
We’re currently looking at a difficult case that brings this into sharp focus. Things are still developing, so there’ll be no names or details here, but in short, from the perspective of the local entrepreneur, he had a nice idea, came up with a good brand for it, located a Chinese supplier who was able to provide the necessary products and personalise them with ‘his’ brand, ordered the stock, set up a website, and started selling them. All good, right?
Well, yes, until he received an email out of the blue from a Chinese firm of trade mark agents warning him that a third party had applied to register a similar mark. Very similar, in fact – the same mark, for the same goods, filed just two months after the business started selling in the UK. Quite a co-incidence, we thought…
His business activities in China prior to their filing date will not have been extensive enough to establish a prior right, so his only option is to challenge the application on the basis that it was filed in bad faith. To prove that, he will need to establish a link between the applicant and his business, to show that they deliberately filed the application after learning about his own plans. That’s going to be a challenge…
Worse, we are still within the six month “priority” period in which the Chinese applicant can file an application to register the trade mark in the UK. Then, he’ll be facing the prospect of being shut out from his home market, unless he can prove bad faith.
Could the entrepreneur have prevented this? Yes – an application to register his trade mark before he started trading would have stopped all of this. It would have given him an enforceable earlier right, and provided a basis to oppose without having to prove bad faith.
This is a an unusual case, but I’ve been warning about the possibility for some time. I’m very disappointed to see it unfold in real life.
An afterword – we’re also recommending that he does not engage the Chinese agent that speculatively alerted him to the application. I’ve never heard of them, their website looks odd (to me), the WHOIS history doesn’t quite match up, and they spotted the trade mark application unusually quickly… almost as if they are involved…
Until next time.