What Happens If Someone Challenges Your Trade Mark?

In this episode of Figure 1: an IP conversation, Albright IP Managing Director Robert Games is joined by Trade Mark Attorney and Associate Joel Weston, who specialises in resolving brand disputes, to walk through a real-life trade mark conflict and the practical steps involved in handling it.

After receiving a letter before action threatening opposition, a business is faced with a difficult decision: withdraw, defend, or negotiate. Using this scenario, the conversation unpacks how these disputes arise, what legal rights are in play, and how a strategic response can shape the outcome.

Trade marks don’t just exist on the register, they exist in the real world.
 And sometimes, prior use can be just as powerful as a registered right.

Through this example, the episode highlights how gaps in due diligence, broad specifications, and lack of professional advice can quickly lead to conflict, and how those situations can often be resolved without going the distance.

The episode covers:
• What a letter before action means and how to respond
• The key grounds for opposing a trade mark application
• How prior use can challenge an earlier registered right
• Why the UKIPO only considers registered marks, not marketplace use
• The difference between using a trade mark and owning one
• When withdrawing an application may (and may not) resolve the issue
• How coexistence agreements allow businesses to operate side by side
• Why most disputes settle, and what influences that decision
• The risks of filing a trade mark without professional advice

This episode is aimed at founders, SMEs, and brand owners who want to understand how trade mark disputes work in practice, and how to protect their brand while avoiding unnecessary cost and risk.

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Transcript

Intro

SPEAKER_00 0:00

The whole issue probably could have been avoided with attorney advice from the get-go.

SPEAKER_01 0:04

It could save you some cost and worry down the line.

SPEAKER_00 0:07

The only way that I could compel you to stop using the trademark would be to actually sue you in court.

SPEAKER_01 0:12

If I withdraw my trademark application, can I continue to use my trademark?

SPEAKER_00 0:17

If there's no trademark application, then there can be no opposition.

SPEAKER_01 0:20

So actually the risk is quite significant that you're going to run into something. Hello and welcome. I'm Robert Games, Managing Director of Albright IP. Welcome to our podcast, Figure One, an IP Conversation. Today I'm joined by Joel Weston, a trademark attorney on our trademark team, who specializes in resolving brand name disputes. Joel, thank you for joining me.

SPEAKER_00 0:43

Thanks, Rob. Great to be here.

Can an owner of an earlier registered trade mark require me to withdraw my application after it has been accepted and published, and on what legal grounds could they challenge it?

SPEAKER_01 0:45

Today we have something a little different for you in that we'll be discussing the practical steps involved in settling a trademark dispute based on an inquiry to the firm. This is a real life scenario. So to set the scene, we have a new inquiry from the recipient of a letter before action threatening opposition and requesting withdrawal of one of their trademark applications. The letter has been sent by an unrepresented party. The other side sending the letter has an earlier registered trademark, but we quickly ascertain that they are unaware that the recipient, our potential client, has been using their trademark for at least three years prior to the filing date of the other side's earlier registered trademark. To complicate matters, the would-be client filed their trademark application themselves without representation, but filed for a list of goods that was broad and somewhat imprecise. I'll be playing the would-be client. The scene is set. Joel, let's begin. So I've recently filed a trademark application. It was accepted and published. And then just after publication, I received a letter from an individual asking me to withdraw my trademark application because they own an earlier registered trademark. Can they do this? What are their grounds for asking me to withdraw my trademark application?

SPEAKER_00 2:07

Well, uh, thanks, Rob. This is a commonly received question that we have from prospective clients that receive letters before action, as we call them. Usually the person threatening the opposition will clearly state out the earlier registered rights that they seek to rely on. The short answer to your question is yes, they they can uh attack your application on their earlier registered rights. There are there are several grounds that uh opponents can rely on to prevent the registration of trademarks. They range from owning earlier similar registered trademarks, like I think we have in this case, to more unusual and exotic opposition grounds that uh require a lot of evidence to substantiate. Uh, generally, you don't see them too often. Uh or or if you do see them, they're they're uh not often uh successfully pleaded. In this case, I think the threatened opponent would be seeking to rely on section five uh of the Trademarks Act, in that they own an earlier similar or identical registered trademark that covers similar or identical goods and services to those that you're seeking to register yourself.

Can prior use of a trade mark prevent challenges from earlier registered rights?

SPEAKER_01 3:28

Sure. Uh and given that I've been using my trademark for three years, which is, let's face it, quite a long time, can they still ask me to withdraw my trademark application?

SPEAKER_00 3:38

Yes, that well, that they can still uh still ask you. Uh the uh the prior use of the trademark would uh likely affect your uh answer to their request. If we have three years good solid use of the trademark that predates their filing date, we may be able to counterclaim against the validity of their trademark and uh assert those prior unregistered rights that you own in the trademark through your use of that mark in the UK. In a uh when trying to establish a prior unregistered right through use, we would need to carefully assess the geographical scope of that use throughout the UK, or is it localized, for example, in one particular town? What goods and services have you used the mark for? Are they similar to the goods and services covered by the threatened opponents, trademark registration? And is the sign that you're using in trade sufficiently similar to their registered right? In most cases, you you would uh expect a threatened opponent to be aware of these prior rights, but I think we'll look at that uh a little bit later in the scenario. But uh in this in this example, uh, they're obviously not aware that you've been using the trademark. We could either take uh an aggressive response and just apply to cancel their registration, or uh generally speaking, I would advise that we take a more pragmatic approach and uh write back to them and make them aware that you've been using the mark prior to their filing date, and hence uh that renders their registration vulnerable to cancellation. On being made aware of that, you would hope that they would see sense and uh go away.

Why does the UKIPO include earlier marks in search reports but not assess real-world use when examining trade mark applications?

SPEAKER_01 5:33

Sure. Um, I am a little bit perplexed in that the UK IPO sent me a search report containing the other side's earlier mark. Does the UK IPO not consider the use of marks when issuing their search reports? Do they not search the internet for clear use? Do they not do anything like that?

SPEAKER_00 5:50

They don't. Uh they're they're very uh black and white, I suppose, with with what they look for. They will look at the trademark that has been filed. They will then do a relatively brief search of the UK trademark register for rights that appear on the register. So they're only going to look at rights that that they can see on the UK register, whether that's a pending application or or a registration. So that they're not going to look, for example, on a search engine and and start looking as to whether you've used a mark prior to them or uh who has an earlier ride within the marketplace. That they don't consider the context of the trademark or how it's used in the market. They will just look at what's being filed for and what's already existing on the register.

SPEAKER_01 6:44

Sure. And if I withdraw my trademark application, can I continue to use my trademark? Uh you can.

SPEAKER_00 6:53

So quite often what I see with new clients is that that they're not aware of the fine line or sort of the difference, I suppose, between obtaining a trademark and using the trademark in trades. So you could withdraw your trademark application, which would resolve any potential opposition dispute. If there's no trademark application, then there can be no opposition. That's a quick way of resolving things. Now that doesn't consider your use of the mark, so I can still use a trademark even though I've withdrawn it at the registry. The only way they could compel you to stop using the trademark would be to actually sue you in court for infringement and obtain an injunction stopping you from using the mark. In most cases, as part of a settlement, if you're agreeing to withdraw the trademark, the other side would also expect you to stop using it, uh or they would be looking for you to sign some sort of agreement or undertaking in which you would agree perhaps a use up period, or we'll cease using it immediately, for example. So yeah, in most cases, if you withdraw, you you would assume that use would also be stopped, but the only body that can prevent you from using the trademark would be uh from the court.

If the other party operates in a different field, how does that affect the strength of their trade mark challenge and our response?

SPEAKER_01 8:21

Okay. So I've looked at the uh other side's website and they operate in a very different field to me. So will this will this make a a difference to how we respond?

In practice, are most companies open to settlement when faced with trade mark disputes?

SPEAKER_00 8:33

I think so. Uh in in this case, we evidently occupy different commercial areas. Um I'm not going to try and imagine off the top of my head what those different areas would be, but we we we can you know uh uh imagine uh perhaps you you're a clothing brand and perhaps the other side uh market software or or or do software development for the car sector. We've got similar marks, but practically they're they're different. We would usually look at the differences within the marketplace and exactly how marks are being used as part of a pre-settlement or pre-coexistence analysis, essentially. So we would you could think of it as having a piece of paper with a line down the middle, and on the on the left side you would have what we do, on the right side you would have what they do, and then the wording of the coexistence agreement would would effectively safeguard both parties' position and enable you to keep going forwards, and that line prevents you from touching. So I think it's a massive point to consider in this particular matter, and hopefully, again, the other side would see sense in that we have prior use, we are potentially operating in different market spaces. Most matters settle. Um, in my experience, parties don't want the cost and the uh effort involved in seeing out contentious proceedings, whether that's in a court or or before or before the UK registry. As professional advisers, we are under an obligation to always consider mediation settlement at all times, right up until a trial. And yeah, it it's something that uh I would be strongly recommending that we try and incorporate it in any kind of uh settlement of this particular dispute, it would centre on your respective uses of the mark.

SPEAKER_01 10:41

And in your experience, would you say that you know most companies when they're faced with these problems, they are open to some kind of settlement?

SPEAKER_00 10:50

Yep. In my experience, the vast majority of companies, businesses, even sole traders, want to settle. Of course, you get some clients that that want to be aggressive, that they that that that's how they like to do things. I am guided by how the client uh wants to wants to act in in a particular matter. If their goal is to keep the register clear of of all similar marks where there is a degree of similarity between the goods, then then that's what we can go for. If if we have to file oppositions or or defend oppositions, then it's uh it's you know, we're we're more than capable of doing that for a client. Of course, you also have to factor in budget time constraints, for example. You may have to issue a infringement claim to meet limitation requirements, for example, or we may have to file an opposition to uh preserve our position if we're coming up against a publication deadline. But just because proceedings have been issued or an opposition has been filed, it doesn't prevent the parties from from settling the matter once once the uh once proceedings start. So, yeah, in my experience, most parties do want to settle. But again, it differs from client to client. If you've got a large company in the US, for example, that that they may go after everything, they might be particularly aggressive, they might have a large budget for these types of things, so they're just churning out oppositions constantly. Uh, there's a few examples come to mind. Uh, likewise, you might have a company that's very risk-averse and perhaps doesn't want the possibility for negative press, for example, to be seen uh to be uh overly aggressive with your rights or or stifling competition. A lot of large businesses don't want to be seen as picking on the small guy, so to speak.

SPEAKER_01 12:47

So, really, um, I think what you're saying is that as we expected, these cases turn on the facts and they turn on the objectives of the particular companies involved, their market strategies, and uh the importance potentially of the brands that they're holding.

SPEAKER_00 13:04

Yeah, exactly that. Uh I think it's it's exactly how you say. Um also I I think uh a consideration should be given to the particular sector they're they're working in. If you've got a client that's working in pharmaceuticals, for example, where people are relying on their trademark to indicate what a particular medicine might do or the effects of a of a drug. If you've got a potentially similar mark that's being filed for similar goods, that there could actually be a real harm, physical harm to the public, uh as opposed to, let's say, for example, a similar clothing brand, which okay, it's annoying for the rights holder to have poor quality or you know similar, lesser quality goods on the market. But me owning a cheap knockoff t-shirt is uh it's not going to physically harm me. But if I get confused over the uh commercial origin of a specific drug, then then you know the the the effects could be quite more harmful.

SPEAKER_01 14:10

Sure. So the the the confusion can actually determine the importance of the case, really, the type of confusion.

SPEAKER_00 14:18

Yeah.

From an attorney’s perspective, is it worth seeking professional representation for trade mark filings to avoid potential costs and complications later on?

SPEAKER_01 14:18

Brilliant. Okay, thank you, Joel. I think that this wraps up this simple scenario. Uh, from an attorney point of view, it does raise a few issues. I guess that you're going to say that taking professional representation, even for what seems like a relatively straightforward filing, could be worthwhile because it could save you some cost and worry down the line.

SPEAKER_00 14:39

Definitely. Definitely. So in this case, we have got the threatened opponent that hasn't done their due diligence, they haven't searched online to see whether the receiving parts of their threat uh has been using the mark. For all they know, perhaps you you have an earlier registered right to that then maybe they're not aware of, it would be part of the due diligence you would you would want to do when when taking on a case. In the well, from the perspecti from the perspective of the the applicant, i.e. the new client, uh attorney advice would have enabled you to draft a sufficiently specific list of goods and services that may have avoided uh you coming to the attention of this third party prior to filing a trademark. You would also always want to search the register for for similar and identical trademarks. And again, with attorney advice, that's something that that I would have done. And so you would then at least be aware of this third party is there, and then the decision will be up to you as to whether you take the the risk with that or not. So at least it wouldn't have come as a as a surprise. Sure.

SPEAKER_01 15:57

And and the register now is actually quite a crowded register. So when you're choosing new trademarks to use, actually the risk is quite significant that you're going to run into something.

SPEAKER_00 16:08

Yeah, absolutely. Especially if you're dealing with a trademark that, let's say, is a dictionary word or is comprised of two or three dictionary words. If you if you've invented uh a word yourself that that has no meaning with respect to the goods or services, generally the risk posed by the earlier marks, or should I say, you'll have a little bit more freedom uh generally. Um I'm not going to reel off a load of made-up words, but you know, it you you can you can imagine. But if you're using a mark or registering a mark that that does contain just normal words in respect of, let's say, clothing or common consumer goods, then yeah, the register can look quite quite crowded. There's generally there's a practical shift as well amongst attorneys and with recent case law that that I think is started to favor more specific specifications in trademarks. Uh so we'll see how that develops. But I I think in this case uh the whole issue probably could have been avoided with with attorney advice from from the get go.

Outro

SPEAKER_01 17:14

Sure. Thank you, Joel, for joining me today. I hope that you've enjoyed listening to Figure One, an IP conversation brought to you by Albright IP. I look forward to joining us next time. Thank you.