If Britain were to exit the EU how would this affect TMs?

[dablue]

Perhaps an apt time to ask the question

If Britain were to exit the EU, would British EU trademark holders NEED to have the a British trademark in order to have their TM upheld within the UK and to stop infringement?

I was speaking to an IP lawyer several years ago who said Europe have been traditionally (obviously) more liberal on the way TMs were awarded over the years. He was telling me in many instances TM applications that have been blocked in the UK have gone on to be granted in Europe, even when there have been objections (which I'm guessing is probably why the UK TM application was blocked initially?).

At this point I don't know what the benefit is to having a UK TM if you already have it protected by an EU one - I would very much appreciate it if an IP lawyer could enlighten me on that too. I think EU TM's cost more?

I'm particuarly interested as a competing company holds (unfairly in my view) an EU TM on a generic word that is essentially a synonym because one letter is different from the traditional way of spelling it... "Boys" vs "Boyz" for example. Their UK application was shot down. Unfortunately their EU TM ties up the class I want to use it for too. To further the example, they were virtually granted a trademark on boys. I thought it was staggeringly lenient!?

 

[dablue]

Title fixed

 

[The Resolver]

Very interesting question. Community mark registration is useful to obtain coverage throughout the EU at low cost rather than applying everywhere. Since the community mark gives protection specifically in EU member states then if we were no longer a member state of the EU such protection would cease as to the UK.

But its not going to happen, so your 'conflict of law' problem remains.

 

[dablue]

I personally don't think it's in Britain's long term interests to exit, but I'm not convinced it's not going to happen, especially with what happened this past weekend. That will be a LOT of negotiating and a LOT of convincing in a short space of time. Knowing how quickly Europe moves...

I'd be interested to know what your opinion would be on challenging an EU TM (a word) on the basis it's too generic? The example above demonstrates my predicament - a "z" replacing an "s".

I did get one opinion that the word would be a good candidate for a challenge, but I couldn't be sure if he was just pushing for more business.

I would appreciate any general thoughts... Obviously I wouldn't challenge it personally, I would contract it out. Thank you

 

[Ronnie ILAN]

Unless your business and product can wait several years, decades or longer for the UK to pull out of the EU or for the CTM system to disintegrate, you need to consider your plans now.

Whether a CTM is vulnerable to challenge depends on the circumstances - what was registered (word or logo), what it was registered for, is it used (if so where and how) and so on.

If you want to launch a "conflicting" mark, then you should have a professional carry out due diligence for you - they may advice that there is no risk or a high risk. There are different strategies to pursue, and challenging a trademark is always possible (in theory) - you just need to make sure that the potential benefits to you outweigh the risks and costs. I am of course presuming that we are not talking about mega brands where the potential benefits are not likely to outweigh risks and costs, and challenges are likely to be almost impossible.

 

[dablue]

Thank you for the reply.

In one respect I am fortunate that it's not something I need to act up on now, I can wait.

In my case it centres around the use of a domain name which I registered coincidentally at the same time a mid sized corporate took out a TM on the word. As I said, the UK TM was refused. They also tried to TM a logo (UK) as well but they withdrew it. They were successful with the CTM (word).

The corporate has tried to buy the domain from me at, what I consider to be, a knock down price. I do want to use it in the same class (there's NO ambiguity over the word), albeit in a different way / business model.

Obviously it would help if I described the details in full, but owing to what's happening right now I'm tempted to sit on it if there's a chance EU TM's will have no effect in the UK in a several years, hence my question.

In my case the TM is equivalent to dvdz = dvds, phonez = phones, and the classes are tied up - there's no ambiguity what dvdz or phonez are. An IP lawyer has already said the use of the "z" in place of the "s" is probably the reason the TM was refused in the UK; it's too generic and similar to the correct spelling. He then went on to tell me about "liberal CTMs" and how they're awarded.

I would be interested to know if anyone thinks there's a reasonable challenge to the CTM based on the word being too generic and too similar to the correct spelling. I have absolutely no issue with the other company continuing to use the word, and they do use it to trade now. I should note they don't use it in the UK... but I think they'd like to.

I appreciate you don't know the exact word and maybe you would need to in order to offer an opinion? It really is similar to the examples above. I'm not looking for freebie advice, more of a general opinion as to whether it would be a good candidate to challenge.

Thank you