Trademark guidance: First examination response - Similar trademark. What to do?

Nitin2908 · Dec 6, 2022

Hello everyone,

I recently applied for the brand name "SHAPECRUNCH" to be trademarked.
However, I got a response from Intellectual Property Office, UK that :
"I have searched the relevant trade mark registers and found an earlier trade mark that I think you should be aware of. My initial view is that your trade mark and your goods are similar to the earlier trade mark and their goods. Therefore the public are likely to confuse your trade mark with the earlier trade mark."

The earlier trademark is
THE CRUNCH

"I am not refusing to accept your application because of the earlier trade mark."

I don't get it how can people get confused with Shapecrunch and the crunch?

I have established a business in another country and I am new to the UK. Don't have enough money for an attorney. I would be grateful if someone can tell me whether I should proceed.

Thanks !

Steve0077 · Dec 6, 2022

I had the same reply to a recent application but where mine included the exact same word as a previous mark. Far worse than yours which is more tenuous since SHAPECRUNCH is all one word. I simply went ahead with the application and it got through with no objection.

If you go ahead with the application then you may or may not receive an objection. However, my understanding is that you will not induce any extra costs at this stage either way. This is because a previous owner who intends to object and later claim costs will have to first inform the IPO by submitting a TM7a form, and then the IPO will inform you. If that happens it is at this point that you would then have a decision to make - withdraw the application or proceed with the risk of being charged costs if the objection is upheld.

If the previous owner does not inform the IPO through a TM7a and later raises an objection you will not be subject to further costs.

So my advice would be to simply proceed with your application and wait to see if any objection comes back, because right now you have nothing to lose financially either way.

Gyumri · Dec 6, 2022

Nitin2908 said:
I don't get it how can people get confused with Shapecrunch and the crunch?

I can see some possible confusion. Let's say "Shapenibble" carves out a success in a niche market for pens and writing instruments and then along comes "The Nibble".

I wouldn't be too happy if I owned the former mark. In fact I might be champing at the bit (no pun intended) to sue for infringement.

Paul Kelly ICHYB · Dec 8, 2022

Are the goods similar?

If you have done this yourself, your risk is a couple hundred quid - just submit it!

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Trademark guidance: First examination response - Similar trademark. What to do?

Nitin2908

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Paul Kelly ICHYB

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