Trade Mark Disputes

There are many different types of trademark objections, challenges and disputes that you can come across, and we have considerable experience in dealing with them all.

Objections from the Trade Mark Examiner at the UKIPO (including notifications)

When you file a trade mark application, the first stage of the process is the examination stage. Some of the most frequently encountered objections from Examiners are –

• The trade mark falls foul of “absolute grounds” provisions ie the Examiner may take the view that the trade mark is non-distinctive or descriptive in relation to the goods and services included in the application.
• The trade marks in the application do not form an appropriate series when various marks are applied for in a single application ie when a series application is filed, the Examiner may take the view that the marks may not resemble each other as to their material particulars.
• The goods and services covered in the application may not be in the appropriate Class, or there might be further clarification required in their descriptions.
• There may be earlier potentially conflicting trade marks cited by the Examiner, although it must be noted that this does not represent an objection as such. The Examiner will merely notify the owners of the earlier rights about your application, unless you are able to provide goods reasons why this should not be so.

We are able to advise you on an appropriate strategy to overcome these objections and notifications once we are able to review the examination report.

Cease & desist, letters before action, and warning letters

Usually, before a third party commences any formal proceedings or legal actions against you, they will communicate their complaint by sending one of the following letters –

• A cease and desist letter, commonly demanding that you refrain from using your trade mark any further and withdraw any conflicting trade mark application / registration.
• A letter before action, written in accordance with the Practice Direction [Pre-Action Conduct], demanding that you sign a cease and desist undertaking [i.e. a contract] to stop using your trade mark, pay damages, deliver up or destroy branded goods / materials and reimburse legal fees. Sending a letter before action is the first step required to be taken prior to commencing formal court proceedings at the Intellectual Property Enterprise Court.
• A simple warning letter, which commonly puts a trade mark applicant on notice of a third party’s intention to challenge their trade mark application / registration at the UK IPO. Third parties send warning letters in order to try and avoid formal proceedings at the UK IPO. A warning letter may demand a full withdrawal of the trade mark application / registration or a specification amendment of the application / registration.

Challenges by third parties or other businesses that own conflicting rights

Aside from objections from Examiners, you might receive a challenge against the use and / or registration of your trade mark from a third party or another business owner, who may claim to have earlier legal rights that conflict with your trade mark. It is also possible for you to be attacked even if the person doing so does not have earlier rights, but finds a vulnerability in your trade mark which they can exploit.

These are the most common types of third party challenges, and we deal with them all.

• Notice of Threatened Opposition – this is when a potential opponent files a request to the UKIPO to make you aware that an opposition may be filed, and this extends the opposition period of your trade mark application by one month.
• Opposition against your application – this is when a formal opposition is submitted by a third party on the basis of earlier conflicting rights or other reasons, such as your trade mark being non-distinctive / descriptive, or that the trade mark application was filed in bad-faith.
• Invalidity against your registration – this is when a third party applies to cancel your registration on the basis of earlier conflicting rights or other reasons, such as your trade mark being non-distinctive / descriptive, or that the trade mark application was filed in bad-faith.
• Revocation against your registration – this is when a third party applies to cancel your registration, most commonly on the grounds of non-use.