November 2022 News

Trade marks are easy, right?

Well, we think they are, but other people keep proving us wrong. 

We usually explain that a trade mark consists of three pieces of information – who is applying, what the mark is, and what the goods and/or services are.  It’s a good idea to give a little careful thought to all three, which is where we come in.  We often see applications filed by unrepresented clients and are a little disappointed that they could have secured a much stronger registration had they been a little better advised.  That’s a shame, because (at best) they’ll need to refile the applications and do it properly at some point, and (at worst) if a dispute arises before they do that, they’ll be in a worse position than they should have been.

We just saw one that made us smile, though, partly because this party was represented.  You may know that a UK application is published before it is registered, to give third parties an opportunity to object?  Well, that objection period is only two months, but it is extendable by one month if requested.  The extension is specific to the person that requests it, though – meaning that the “opposition” deadline is (or was) two months for everyone else, and three months for whoever asked for the extension. 

So it’s really important to get the details spot on in the request.  We received one a few weeks ago in which a solicitor acting for the other side filed an extension request in respect of one of our clients’ trade mark applications, but when asked to identify the potential opponent they named our client.  The 2-month deadline has now passed, so the opposition period is still open if our client wants oppose her own application, but no-one else can – including whoever the solicitor’s client might be!

Needless to say, we’re advising our client not to take advantage of this opportunity to oppose her own application. 

It just goes to prove – intellectual property is about attention to detail.  The solicitor in question is a generalist, her website says that her area of expertise is asylum law and human rights law.  So it’s probably a genuine mistake, and one that is in fact quite easily made, but not one that we would make.  There are plenty of generalist lawyers who are sensible enough to ask us to step in and deal with trade mark, patent and design questions, and their actions speak louder than any words I could string together. 

Until next time.

Best Wishes

Michael Downing

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