Applying for trademark, Notice of objection

[Mpg]

Hi Folks,

Were going through the process of trademarking our business, Partly as another company jumped on our .COM URL when we missed ALL the emails saying it needs renewing.That aside, A company in the Netherlands have sent notice that they intend to object.


They are quite big over there but have no direct Business in the UK. We've replied to them without prejudice that we may be willing to limit our sector, (its specialist courier/Transportation) They are pallet/Couriers. However they've come back with quite restraining terms.

As an example, They have trademarked MY! and i'm trying to trademark My2Transport We do both operate under the same category

My initial thoughts were they are just trying to use bully tactics. Any thoughts on whether they are likely to be successful if we just let the timer run out, and wait for them to formally object.

In our initial reply we did hint that we would be asking for proof they trade with that name in the UK

 

[Banksbroo]

Are you a limited company or sole trader, ie. do you already have a companies house registration? There are already quite a few My Transport variations, and a shedload of My-name of service. Has this Dutch company trademarked MY with the exclamation mark or just the word MY?
How attached are you to the word My? Is it worth the time and expense of defending? My2Transport isn't sparking much joy to me personally.

 

[Paul Kelly ICHYB]

I would think that MY! and My2Transport are suitably different and if My2Transport is your Ltd co name you have a good chance of getting it passed.

Bear in mind, if you spend money fighting it, you could still fail, however, finding an agreeable solution with the other company would be the best solution.

 

[fisicx]

Is the company that now have your .com the same as the Netherlands company?

 

[Mpg]

Are you a limited company or sole trader, ie. do you already have a companies house registration? There are already quite a few My Transport variations, and a shedload of My-name of service. Has this Dutch company trademarked MY with the exclamation mark or just the word MY?
How attached are you to the word My? Is it worth the time and expense of defending? My2Transport isn't sparking much joy to me personally.

Yes LTD.

Its not MY, I was just giving an example. But we've been UK trading with the full name since 2008

I would think that MY! and My2Transport are suitably different and if My2Transport is your Ltd co name you have a good chance of getting it passed.

Bear in mind, if you spend money fighting it, you could still fail, however, finding an agreeable solution with the other company would be the best solution.

This is the worry. Theyve got an IP lawyer and if they succeed we could be liable for £££'s

We've suggested we tighten up our criteria, and they responded with a thats great but heres a load of other restrictions we want you to agree too. Gutted really as if they had been 2 days slower they would have missed the deadline.

They still haven't officially opposed just registered that they plan too

Is the company that now have your .com the same as the Netherlands company?

No, its a different company that has the .COM (we'll be dealing with that one separately)

I didn't want to put our actual company name but you already know it. They have trademarked the first 2 letters and a !.

 

[Gecko001]

Has the company, who is threatening to object, trademarked their name in the UK?

 

[Mpg]

Has the company, who is threatening to object, trademarked their name in the UK?

Yes
Essentially My! the LOGO and colouring that is totally different to mine.

 

[Mpg]

I'm being guarded and I dont know if i need to be or can just put all the info here...Their ip lawyers are UK based though. So maybe on here.

The deadline for everybody else to object has passed so only they can move forward with the objection so i'm probably not setting myself up for more harm apart from maybe a google search finding this

 

[CLM Controller]

Hi Folks,

Were going through the process of trademarking our business, Partly as another company jumped on our .COM URL when we missed ALL the emails saying it needs renewing.That aside, A company in the Netherlands have sent notice that they intend to object.


They are quite big over there but have no direct Business in the UK. We've replied to them without prejudice that we may be willing to limit our sector, (its specialist courier/Transportation) They are pallet/Couriers. However they've come back with quite restraining terms.

As an example, They have trademarked MY! and i'm trying to trademark My2Transport We do both operate under the same category

My initial thoughts were they are just trying to use bully tactics. Any thoughts on whether they are likely to be successful if we just let the timer run out, and wait for them to formally object.

In our initial reply we did hint that we would be asking for proof they trade with that name in the UK

I wouldn't necessarily assume they're just using bully tactics. The fact that they don't currently have a direct UK business presence doesn't automatically mean their trademark can't be relevant to a UK application.

The main thing I'd look at is how similar the marks actually are, and whether the goods/services are similar enough that consumers could realistically confuse the two businesses. “MY!” and “My2Transport” may look quite different when considered as a whole, but the details of the existing trademark and the specification it's registered under will matter.

I'd also keep the domain issue separate from the trademark issue. Having a particular .com domain, or losing one through a renewal issue, doesn't by itself establish trademark rights.

If their proposed restrictions are particularly broad, it may be worth getting professional advice before agreeing to anything. Otherwise, allowing the formal opposition process to run its course could at least require them to set out the actual grounds for opposing the application.

 

[Mpg]

I wouldn't necessarily assume they're just using bully tactics. The fact that they don't currently have a direct UK business presence doesn't automatically mean their trademark can't be relevant to a UK application.

The main thing I'd look at is how similar the marks actually are, and whether the goods/services are similar enough that consumers could realistically confuse the two businesses. “MY!” and “My2Transport” may look quite different when considered as a whole, but the details of the existing trademark and the specification it's registered under will matter.

I'd also keep the domain issue separate from the trademark issue. Having a particular .com domain, or losing one through a renewal issue, doesn't by itself establish trademark rights.

If their proposed restrictions are particularly broad, it may be worth getting professional advice before agreeing to anything. Otherwise, allowing the formal opposition process to run its course could at least require them to set out the actual grounds for opposing the application.

They are a DHL type parcel carrier and we work in a very small niche sector. I can't imagine anyone thinking we could be connected.

They are asking for company and personal liabilities. Also that we can never challenge any of their future trademarks. We can only operate in the UK using that trademark. Which screams they dont have a presence so could possibly lose their right to the trademark in the UK.

I'm tempted to let the clock run down and see. We were being reasonable with tightening up the wording of our sector but they are pushing back wanting further restrictions.

 

[CLM Controller]

They are a DHL type parcel carrier and we work in a very small niche sector. I can't imagine anyone thinking we could be connected.

They are asking for company and personal liabilities. Also that we can never challenge any of their future trademarks. We can only operate in the UK using that trademark. Which screams they dont have a presence so could possibly lose their right to the trademark in the UK.

I'm tempted to let the clock run down and see. We were being reasonable with tightening up the wording of our sector but they are pushing back wanting further restrictions.

Yeah, to be honest, I think they're pushing this quite a bit too far. If you're operating in a very small and specific niche, I'd struggle to see a realistic case of customers thinking the two businesses are connected.

The personal liability and the restriction on challenging any of their future trademarks in particular seem way beyond what would be needed to deal with the current potential conflict.

That said, I wouldn't rely too heavily on the fact that they don't have a UK presence. There are specific rules around trademark use and the grounds for opposition, so if they genuinely have a legal basis for objecting, they'll have to demonstrate it through the proper process.

Personally, if you've already made a reasonable attempt to narrow your sector and they're still pushing for increasingly restrictive terms, I'd be inclined to let them take it forward rather than agreeing to something that could unnecessarily tie your hands in the future. At least then they have to put their actual case forward, and you can deal with that on its merits.

 

[Gecko001]

Yes
Essentially My! the LOGO and colouring that is totally different to mine.

Are you saying that their trading name and logo are the same as your trading name and logo except for the colours, and they have all that trademarked in the UK.

 

[Mpg]

Slight update. They have officially opposed it, Although i've not been notified on what grounds.

How strict is the opposition date as they missed it? Not by much but they still missed it

The publication date was the 5th June and opposition was 7th September.

 

[Mpg]

Slight update. They have officially opposed it, Although i've not been notified on what grounds.

How strict is the opposition date as they missed it? Not by much but they still missed it

The publication date was the 5th June and opposition was 7th September.

Seems as it was a weekend they get the extra day.... So filed it in time... I'll just have to wait to hear from the IPO on what grounds...