September 2015 News

The importance of registering a trade mark

We've had an interesting case land on our desk this week, which highlights the importance of registering a mark as soon as a business gets off the ground. It's quite a tricky case, involving a small UK firm and a multinational company and one of its sub-brands. There is no immediate easy answer. Read on to find out how we plan to tackle it.  

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About Downing IP

We are an independent firm, which works to protect original ideas and the interests of those who create them. Specialising in patents, trade marks and design protection, we work with companies from small start-ups to multi-nationals, producing effective and affordable strategies for protecting your brand, invention or design.

The importance of registering a trade mark

A Difficult Examiner
Several years ago, a multinational company adopted a trade mark that covers one of its sub-brands. Despite being a fairly non-descript word that (in English) is used fairly widely in this field, registration of the mark was allowed and no-one objected at the time.

It was a considerable amount of time before the sub-brand was rolled out to the UK, during which time our client set up their business and adopted a name (in good faith) that conflicts with the registered trade mark. Fast forward to the present day, and now that the multinational has started to use the sub-brand in the UK, they have started writing to the various UK companies that are using this word in their names to ask them to stop. 

Our client didn't seek to register the name of their company at the time of its inception, and herein lies the problem. 

If the client had registered their mark immediately, the potential conflict with the multinational would have been brought to their attention. There were lengthy periods during which the multinational’s trade mark registrations were vulnerable to a challenge on the basis that the trade marks had not been used in the UK – a continuous period of five years of non-use is enough for the registration to be revoked, but only if someone applies to the Registrar while the mark is still not being used. However, now that the sub-brand is in use this avenue is no longer open to the client. Likewise, we cannot rely on an acquiescence defence, because this requires the client’s mark to be registered. The client’s only real option is to challenge the distinctiveness of the trade mark – not impossible by any means, but certainly not a trivial task. 

The lesson of this tale is a familiar one – register the mark at the start of the business, or as soon as possible thereafter. Even if that reveals problems, you’re better off knowing about them sooner rather than later.   

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