Trade Mark

[Grgksome]

Hi all
We are a small jewellery company and we sell online on our website and ebay. Recently I tried to integrate our products with Amazon, but without a trade mark on Amazon you do not get the full shop experience. To comply, I launched a Trade mark registration, the cheapest option in one category, cost about £170.

Nearly two months in and just three days before the registration would have gone through, we got an email from IPO that a Form TM7A , "Notice of Threatened Opposition" has been sent. It seems a really well known multi-million Jewellery company based in USA is planning to oppose this trade mark.

The opposition comes from their lawyers in UK based in London. What I don't understand is that there shouldn't be any grounds for opposition. We have no where the same name, logo, colour, font or any thing even remotely similar other than both being jewellery companies. I have yet to receive any communication from the lawyers. Should I call them or should I wait for a letter or some sort of communication from them?

Thanks for your help

 

[Root 66 Woodshop]

Sounds like someone's trying to scam your company...

If the name, colour and logo are all different then what have they pulled it on?

should be an interesting read

 

[ethical PR]

Hi all

Nearly two months in and just three days before the registration would have gone through, we got an email from IPO that a Form TM7A , "Notice of Threatened Opposition" has been sent. It seems a really well known multi-million Jewellery company based in USA is planning to oppose this trade mark.

The opposition comes from their lawyers in UK based in London. What I don't understand is that there shouldn't be any grounds for opposition. We have no where the same name, logo, colour, font or any thing even remotely similar other than both being jewellery companies. I have yet to receive any communication from the lawyers. Should I call them or should I wait for a letter or some sort of communication from them?

Thanks for your help

So what grounds are they saying they have for opposition?
Your post isn't clear. You say you were contacted by their lawyers in London and then say you have yet to receive communications from the lawyers.
Which is it?

 

[Grgksome]

I got Form TM7a via IPO email, filed by the lawyers. There has been no direct communication with the lawyers. Still awaiting either a letter or call from them about this.

 

[surreyaces]

They may or may not contact you again. They are certainly not obliged to; by filing the TM7a they have given you notice of their intention to oppose your application, so its certainly possible that the next thing you will receive is a copy of the opposition paperwork. On the other hand, they may have filed the TM7a just to try to scare you into surrending your application. It's very difficult to say more than this on the basis of the information you have supplied (I do of course understand why you don't want to give full details on this public forum).

 

[Grgksome]

Hi
You have explained it well and that is the exact situation I am in. having not received anything from them I am wondering if it is a scare tactic or I have not received a letter from them (lost in post etc)

Question is should I contact them or not?

Thanks

 

[Engage Legal]

I am not sure of the precise process, but they should have some grounds on which to oppose the application. May be a matter of contacting them (in writing) and asking what the grounds of opposition are.

 

[surreyaces]

If their case against you really is as hopless as you are suggesting then I'd perhaps be inclined to wait. That having been said, I'd be very surprised if they didn't have at least some sort of case - otherwise, with the greatest of respect, why would they have even bothered filing the TM7a considering that you are a small company and they an already really well known multi-million pound one?

 

[Chris Ashdown]

It may just be a name that they can see value in and would like to use it themselves or maybe have it as a trading name for a online company they own. Have you looked at who owns domains with that name around the world including .com and .ltd

 

[cjd]

Call the IP Office and ask them to explain the process and what your options are if any. They're generally very helpful.

I assume you don't wish to pay for advice but if you do go that way, I can recommend a good and reasonable IP lawyer. (But if you're lucky, one will pop up here.)

 

[surreyaces]

I am a trade mark attorney and happy to help, although as I said earlier without knowing what the marks are we can only speculate really

 

[Grgksome]

thanks all, I have now received communication. There is one letter difference between their registered brand and the trademark we filed.
They have asked us to pull the application, phase it out in the next three months, undertake in writing that we will not register a brand similar to this again and remove our domain registration and not renew it

Our trademark was AYLAS while their is ATLAS. In the same category. However our business name is Aylas Gems Limited and our website is aylasgems.com

Can I go back to them and say we are going to rebrand as Ayla'sGems this way we can keep our company name , website and dont have any direct confusion?

Any IP lawyers here?

 

[surreyaces]

You can propose that to them, but I doubt that they will accept