Trademark Copycat - How to Protect and Stop them Registering - Help Needed

Discussion in 'Legal' started by Sarah K, Jan 9, 2019.

  1. Sarah K

    Sarah K UKBF Newcomer Free Member

    5 0
    Hello Guys,

    I would appreciate your valuable advice.

    Background:
    I am garment decorator and in a business of selling printing T-shirt & much more.
    I had registered a Trademark mark, which contains both Text & figurative design in Class 25 clothing.
    When I reported the seller on ebay VERO to remove listing as it infringes our Trademark in question. As they were selling T-shirts using Text mark as ours but just different design.
    Ebay did remove their listings. However seller contacted us with the explanation that their design is different and made in house.

    Later on the seller has submitted an application with Trademark Uk with same text as our but different figurative design to register their trademark. They have also submitted application in Class 25 as our's as they are our competitors and in same business of T-shirt selling.

    My Question :
    Can someone copy and register your trademark using same text but different figurative image in same class ?

    How to stop the application to being registered? or withdraw it as its copied from our's?

    How to explain the other party that they do infringe our Trademark? As changing figurative design doesn't make it different from our trademark.

    I would like to share my view to make them understand by simple example. Please help us to write a good explanation to other party with example.

    E.g if someone make a in house Adidas logo (different the one registered) and start selling T-shirt with their in house made adidas logo on it. Of Course it will infringe the adidas trademark as public will confuse and assume its original adidas. So Law does protect adidas with text as well figurative.

    Please advise.
    Thank you for taking the time out of your busy schedule to read all .

    Many Thanks

    Kind Regards
    Sarah
     
    Posted: Jan 9, 2019 By: Sarah K Member since: Jun 6, 2018
    #1
  2. obscure

    obscure UKBF Ace Free Member

    2,792 650
    1. Inform them that the word (regardless of design) is registered as a trademark and their use constitutes infringement. Unless they cease and desist you will take action for trademark infringement.
    2. You can oppose their registration by contacting the Intellectual Property Office - https://www.gov.uk/guidance/objecting-to-other-peoples-trade-marks-and-the-legal-costs

    If you don't understand either of the above you should hire an experienced Trademark lawyer.
     
    Posted: Jan 10, 2019 By: obscure Member since: Jan 18, 2008
    #2
  3. Sarah K

    Sarah K UKBF Newcomer Free Member

    5 0
    Many Thanks for prompt response. I have understood now. let me go ahead and see when I can file opposition. Great Much appreciated !!!
     
    Posted: Jan 14, 2019 By: Sarah K Member since: Jun 6, 2018
    #3
  4. AdamTMA

    AdamTMA UKBF Contributor Free Member

    40 5
    Do note that there are strict deadlines in which a trade mark opposition must be filed (within 2 months of publication in the Trade Marks Journal). It is also wise to send them a notice of threatened opposition before opposing, otherwise you may not be entitled to costs.
     
    Posted: Jan 22, 2019 By: AdamTMA Member since: Aug 16, 2018
    #4
  5. AdamTMA

    AdamTMA UKBF Contributor Free Member

    40 5
    As above, advice in these matters is sensible. One of our clients was recently opposed by someone who had not sought advice, and represented themselves. They made such a mess of the opposition after numerous attempts that it was eventually struck out by the registry (and their opposition fee wasn't refunded).
     
    Posted: Jan 22, 2019 By: AdamTMA Member since: Aug 16, 2018
    #5