Invalidating or revoking a trade mark

[Cypriot]

Hi There
I am a commercial utility broker and doing this business more then 4 years now. and i got a company and in my company name i used CUB as it is common word in industry in UK

and apparently one of the other company doing the same business in UK manage to registered the word CUB as trademark and now they start War to all others using this word ... how can this be right and allowed ? is there anybody could give help for this ? or can tell cost and chances to revoke it.. they been so spitefull and i dont think it is right to be allowed for trademark for common word.
you can see the Trademark details REG NO : 2519721

Thank you so much.

 

[MrMichael]

I doubt they would have been able to obtain 'CUB' as a word mark. The mark in question has been registered as a logo mark and so limits their ability to take action.

What action are you aware of that they have taken against people using CUB?

 

[Cypriot]

It seems they trying to stop people doing the same business using the CUB word in their business name or in their website name. and i dont understand how can they do that.

Thank you so much for your reply

 

[Cypriot]

I just noticed that there is another REF NO for their TradeMark 2529178

 

[Cypriot]

If CUB is an accepted acronym for Commercial Utility Brokers, then that would give you a solid ground for applying to invalidate the trade mark, on the basis that it is not distinctive and is descriptive to an extent of the services that are provided by the company.

They saying they been trading since 1944 but that doest change the fact that this CUB as word in the industry not own by anybody since they got the Trademark registration now they start the WAR...

Thank you so much for your reply

 

[MrMichael]

Descriptive trade marks can become distinctive through usage, which may be what the owner has shown. I'm not sure whether or not this is the case in the present case though. I'd be surprised as the acronym is descriptive and it would be difficult, in my view, to show that the mark had become distinctive/recognised by consumers as identifying a sole provider of the services in question.

 

[Cypriot]

Descriptive trade marks can become distinctive through usage, which may be what the owner has shown. I'm not sure whether or not this is the case in the present case though. I'd be surprised as the acronym is descriptive and it would be difficult, in my view, to show that the mark had become distinctive/recognised by consumers as identifying a sole provider of the services in question.

Yes but the thing is Everybody doing this job using this word and if someone like them come up later to trademark the CUB word and start WAR with all others then how can they have the right to do i cant quite understand this , where can i stand now to revoke this Trademark ? do you think i have chance ?

 

[MrMichael]

As I've said, you could certainly apply to invalidate their trade mark. You would probably stand a better chance if you used an experienced trade mark attorney/solicitor.

An acquaintance of mine may be willing to look over the papers at no cost if you want me to send the papers over? This would give you a better idea of whether you would have a good chance of being successful.

 

[Cypriot]

yes please do , i have been on TM site to see the costs and i can see it is £230ish and of course it needs a bit work to prepear the case. but i dont mind paying solicitor to do if i have chance of course. and it would be good to know the cost as well.

 

[David Warrilow]

Hi

I'm a patent and trademark attorney at London IP.

The trademark manual says:

In all cases the distinctive character of the sign must be assessed in relation to the goods/services specified in the application. Account may be taken of facts that are considered to be well known. For example, some letters, such as "L" and "S" are members of a "family" of letters commonly used in the motor trade to designate trim or performance characteristics of motor vehicles. The average consumer will probably take the letters "LS" as a mere trim level designation for motor cars whereas other similar combinations, such as "Z7", may function as a trade mark.
However, unless research or general knowledge shows that there is a history of non trade mark use of similar combinations of letters/numbers in a particular trade, the application will be examined on the assumption that the letters/numbers are sufficiently random. The matter may be re-considered in the event of observations or opposition.

The most important part here is:

the application will be examined on the assumption that the letters/numbers are sufficiently random. The matter may be re-considered in the event of observations or opposition.

In any event the mark registered is a device mark (i.e. not the letters CUB alone).

It is a logo.

There is a good argument that the protection afforded by the registration only extends to the logo itself, not the letters.

I would recommend contacting a trademark attorney and having them write a stern letter in response. We'd be happy to help with this. Feel free to pm.

 

[shandp]

At our firm we have regular first-hand experience of matters such as these and it is often the case that there is little substance to the allegations made in such a threatening letter. If they are alleging trade mark infringement then you may well have a basis to turn the tables on them and threaten them with an action for "groundless threat of infringement" under Section 21 of The UK Trade Marks Act 1994,​

It is difficult to say anything more without having sight of the papers, so feel free to get in touch if you would like to take the matter up and I would be happy to discuss it further with you.

Robin​