Trade mark opposition proceedings - defences which do NOT work
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Written on 27
It comes as no surprise to many practitioners that some trade
mark owners will seek to go it alone rather than pay for privilege of
having a professional on board to fight on their behalf. This is more
common when it comes to applying for a trade mark rather than opposing
the registration of an application. This article seeks to set out some
of the common mistakes that applicants make when faced with an
opposition and without a trade mark specialist on board.
"I have an even earlier trade mark than the opponent"
An inexperienced applicant who is opposed may seek to turn the
tide against the opponent by claiming that he or she is the registered
proprietor of a trade mark which predates the opponent's mark.
Unfortunately, it isn't the case in opposition proceedings that one of
the applicant's marks can come to the rescue of the application under
attack. The correct course of action is to apply to invalidate the
opponent's trade mark. If successful, the invalidation will remove the
obstacle to registration for the mark applied for.
"I've been using my trade mark before the opponent registered
their trade mark"
It is somewhat understandable that an applicant facing
opposition proceedings will want to rely on prior use of their trade
mark to fend off an attack against their application. This position was
considered in Ion Associates Ltd v Philip Stainton and Another, BL
O-211-09. The appointed person rejected such a defence as being "wrong
in law". As per the above, the appointed person in that case stated
that the correct procedure for an applicant was to oppose or apply to
invalidate the opponent's mark.
"There's no confusion between the marks in the marketplace"
This argument might appear to have some merit on the face of
it, although it will seldom succeed in seeing off an opposition based
on likelihood of confusion. In Compass Publishing BV v Compass
Logistics Ltd  RPC 41, Laddie J held that any such argument did
not take into account the possibility of notional use taking place or
the trade mark being used. Indeed, it is possible for a trade mark to
be registered without actually being used (although a continuous five
year period of non-use may render the mark liable to invalidation).
There really is no substitute for having an experienced
practitioner on your side to fight off an opposition. The scenarios
above also demonstrate the importance of looking ahead, registering
early and keeping an eye out for competitors who may seek to undermine
the growth of your brand and, by extension, your trade mark.
Written by Aasim Durrani
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
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Article Published/Sorted/Amended on Scopulus 2014-05-14 14:54:44 in Legal Articles