Trademark Dispute

[Yasin1984]

Last month I tried to register a trademark through the IPO Website. Before doing this, I did all of the relevant checks i.e. search the IPO website for similar sounding trademarks, registered the PLC, etc...

After feeling confident that I had come up with a pretty unique sounding trademark in my class, I decided to apply to register it.

A month on, this is the email I have received from an IPO Examiner:

I have searched the relevant trade mark registers and found earlier trade mark

that I think you should be aware of. My initial view is that your trade mark and

your services are similar to the earlier trade mark and their services. Therefore

the public are likely to confuse your trade mark with the earlier trade mark.

The earlier trade mark I have found is listed at the end of this report. I have

highlighted the class which I consider to be similar to those in your application.

It is important for you to know that I am not refusing to accept your application

because of the earlier trade mark. However, if you decide to proceed with your

application I am obliged to write to the owner of the mark listed below as they are

a “UK’ trade mark to inform them of your application. UK trade marks begin with

the prefix ‘UK’.

If you proceed, your application will be published in the online Trade Marks

Journal and anyone can oppose your application should they have grounds to do

so. If such action were to be successful, this would likely result in a costs award

against you.

This has annoyed me somewhat as I did search the IPO website for 2 whole weeks and this other trademark did not come up.

What I want to know is:

1) When she says 'this would likely result in a costs award against you,' what exactly does this mean?

2) I applied for Class 41: Educational Services for Children. The other trademark is registered under Class 41: Training Services in Relation to NVQ's and consulting services in relation to education.
If I was to stay within Class 41, but changed it to something more specific, such as Class 41: Tutoring Services, would that be more likely to be accepted?

Thank you

 

[kelvin1950]

I'm by no means an expert but I'd say your best course of action is to go away and think up a new name for your trademark. Your above post suggests to me that it can all only end in tears.

 

[Trademarkroom]

HI, the owner of the earlier mark may not be interested in your application which means that your application will just continue to be registered if no oppositions are received. The only way you can know this for sure is to allow the application to be forwarded to publication! You could try and persuade the examiner not to write to them, offering to limit your specification as suggested- also check if it's a UK mark as if it's an EU mark they will not be notified.

 

[Twoscoops]

Agree with above, see if you can amend the terms of the mark you are applying for. If you decide not to and the examiner writes to the earlier mark's owner then they may not object. But if they do then they will file a threat of opposition, in which case you will have the opportunity to withdraw without losing any more money.

 

[Diane@JFS]

As both trademarks are within class 41, this is where the conflict is arising. Being more specific will not change the situation as the Class is the relevant issue. An examiner has a duty to advise any other trademark holder of any conflicts that may arise. An examiner will not be persuaded to ignore this letter as this would breach their duty.

If you proceed with the application and an opposition is received, then the other party may be entitled to claim their costs (legal fees etc). It may be the case that the other party is not concerned with your application however, if someone has gone to the trouble of formulating a trademark and paying for it to be protected, then we would generally advise that they will be concerned with any conflicts that arise.

The best way forward would be for you to change your trademark so that it is no longer conflicted. However, without seeing your trademark or the other trademark in question, we are unable to advise on the best way of doing this.

Joseph Frasier Solicitors

 

[Trademarkroom]

All advice given is general as we are not party to all the facts. Examiners have been persuaded if the goods/services in question within a same class are very different. A mark will not be refused just because a similar mark exists and the emphasis is on the earlier rights holder to oppose. How many times has a similar mark been raised but no opposition raised- many many times. Caution is always advised of course, happy to advise further if you would like to send me details.