Trade marking application

[Phoenix487]

Hello,

I have already applied for a trade mark of my brand logo. Which is an image and a name on a block colour background. I have since received correspondence to ask if I wish to continue my application as there are two other old trade marks. I've tried to look into the information online but am getting a bit confused of the possible next steps.

One is the same prefix of my company name with a different word at the end, very different fonts and imagery. They sell everything so have chosen things from all classes. Where as mine are only across two classes (skincare and candles). They are UK based.

The other is based in AU. They have trademarked the same prefix of my name, no imagery and are selling a different class of which I have one item from (candles).

What I am confused about is, if I continue the application and they object, would I be able to suggest mediation or would it be their decision if it was to go to mediation or court if it goes that far? I am worried about being left with a large cost to pay and losing the branding/ trademark name. I was under the impression that as our logos look very different there wouldn't necesarily been an issue. Especially as they do not wholely sell skincare.

Any help and advise would be much appreciated, this is becoming a minefield for me at the moment.

 

[Hughj11]

Hey,

The approach that any previous right holders might take is completely up to them. They could reach out to suggest mediation, but since there is a (relatively) very limited time scale of 3 months to oppose a new application, they might at first oppose to start the opposition proceedings and then go through mediation.

If they do oppose, you will have to present your observations, which come at no additional cost to you, although hiring a trade mark attorney to handle the opposition is probably best so that would be your expense.

It's also worth noting that whilst figurative marks (logos and the like) do offer some protection for the words, depending on their prominence, the protection afforded is much less than that of a word mark.

Lastly, in relation to the classes, they do not need to exclusively use these classes, simply using them in the course of trade is sufficient, even if it is a very small aspect of their business, they still have protection. If they do oppose, they will need to provide evidence of using the trade mark in those specific classes.

If you like, you could send me a message with the marks in question so I can have a better idea of their similarity and potentially propose the next steps.

 

[Phoenix487]

Good Mornign Hugh,

Thank you very much for your response and appreciate your advice.
I shall send you a message with further information shortly.

 

[Ray272]

The UKIPO office are absolutely brilliant for these matters. I got a UKTM and had an opposition and we just tweeked the description to something more concentrated in my industry and that was that. It was a bit of bother and had to deal with the opposition parties legal people but the people who helped me were the UKIPO.

 

[Phoenix487]

Thanks for the advise Ray. My main concern is that one of them sells in all classes where as I am only focusing on skincare products and will not be selling through the same channels (ebay and amazon) like they do. I have only also chosen those that are directly linked to what I shall be doing so unsure how the description could be tweaked to be more concentrated. Shall have a look into the UKIPO services in case.

 

[Phoenix487]

The UKIPO office are absolutely brilliant for these matters. I got a UKTM and had an opposition and we just tweeked the description to something more concentrated in my industry and that was that. It was a bit of bother and had to deal with the opposition parties legal people but the people who helped me were the UKIPO.

Were you able to trade during the opposition?

 

[Ray272]

Thanks for the advise Ray. My main concern is that one of them sells in all classes where as I am only focusing on skincare products and will not be selling through the same channels (ebay and amazon) like they do. I have only also chosen those that are directly linked to what I shall be doing so unsure how the description could be tweaked to be more concentrated. Shall have a look into the UKIPO services in case.

When I did it initially I thought the classification had to be based on the options available but that's not totally correct. So you can identify the class but then you can really concentrate your description. I learned this whilst opposition was commencing and agreed to do this with the opposition legal people. I then contact IPO UK who helped me change description.

I was trading throughout.