Trademark Opposition

[Deggle]

Good afternoon!

I just wondered if anyone could offer me some brief advice around a trademark I'm trying to register. Some time after the initial registration we've received a lawyers letter from a company selling similar products stating they want us to withdraw the mark or they will formally oppose it.

I won't say the specific mark, but it's quite easy to provide a good example/analogy by simply switching the product in question:

We've been trading as "Happy Little Jackets" which is a registered mark.
We sell children's jackets, but wish to widen the market to adult jackets.
We submit a registration for "Happy Jackets" to the IPO.
An established (£1b company) with the brand "Heavenly Jackets" sells jackets to adults.
They object claiming our mark is confusingly similar to theirs.

I think they are trying it on, essentially bullying us to withdraw our mark.

It would be great to hear anyone thoughts - do you feel these marks are very similar?

Also, if we ignore their letters and they file a formal opposition does this expose us to costs?
Is the onus on them to support their position?
Would we need to defend this or can we just see what IPO's take is on it?

Thanks in advance for any advice!

Kind regards,
Tim

 

[F_B]

If the third party oppose your mark, and you lose the opposition, you will be liable for costs on a scale of £200-£3000 ish. You must defend your position during opposition proceedings otherwise it is likely that the UKIPO will rule in favour of the opponent.

I cannot comment on your example marks, there can be critical and subtle differences which would make the difference. However, I'd be more than happy to discuss your exact position privately.

It may be possible to resolve the dispute in a way that is acceptable to both parties, for example, you could offer to undertake to not pass off your goods as theirs, or find some way of ensuring the risk of confusion is kept to a minimum (are the Heavenly jackets of a particular style or aimed at a specific demographic).

 

[ethical PR]

Deggle - how is this 'trying it on' or 'bullying'? - they are just trying to defend their brand - just as you would - if you were in their position.

You are the one trying to develop a trademark similar to theirs.

 

[Deggle]

Thanks for your advice Frazer - it may be something we need to progress, but I probably need a better idea around our chances of making progress first. We have invested in domains and branding, and did extensive research on the use of the brand (but obviously did not come accross 'heavenly').

Ethical - I don't believe the brands Happy XYZ and Heavenly XYZ are highly similar. Sure, in their position I'd probably also try to persuade the other party to back off however I would not expect that it would ultimately go my way.

 

[nelioneil]

I think happy and heavinly do have similar connotations (positive, vibrant, uplifting etc...). That is just my opinion though. Plus your plans to now diversify sell in the same industry, I can understand their opposition.