Trademark Infringement

[tylerdurden69]

Hi There,

Newbie here over the pond looking for some advice. We own a chain of restaurants in the USA - we have a fairly generic name but we are a known brand. We intend to open and have publicly been seen in the media to say so in the UK however some keen bean has trademarked our brand name without us seeing this and it has been approved.

Given they have never traded in the UK yet neither have we do we have any grounds to dispute the mark etc? Keen for some top level advise if we can do anything (aside from change our name).

Thanks,

Tyler
New York

 

[Hughj11]

Hi Tyler,

Welcome to the forum!

Unfortunately, I don't think there's much you can realistically do from a legal position. If you haven't used the name in trade in the UK you don't really have any rights to the name. If the other party have registered the name purely for the purpose of prohibiting you from using it in the UK, whilst not having any intention of using it themselves, then you could file an invalidation action. The problem with this is that it is extremely hard to prove and could be very expensive. Also bear in mind this is purely theoretical as I don't have nearly enough information to tell you.

Unlike in the US, you do not have to use a trade mark prior to registration, in fact, you have 5 years after the application to show 'genuine use'.

Pragmatically, the best solution would probably be to get in touch with the proprietor to see if you can buy the trade mark off them or at least negotiate a co-existence agreement and go from there.

Hope this is somewhat helpful!

 

[paulears]

Presumably, they're waiting for you to make them an offer on the name if they're not trading. You're not using the name here yet, so if the name is sitting ion a dormant account, your course of action seems an easy one - buy it!