Trademark Opposition

[Witchwood]

Hi all. I applied for a trademark for one of my product's names in May. On searching the register then there were a few with the same name, although completely different products and categories. Today i received a notice of opposition from an American company, who have also applied for a product with the same name, although completely different product. Our categories are similar though, being a pet product. ( Theirs is a door mat and mine a shampoo.) Their application was published at the same time as mine, and I didn't see it when I searched as it wasn't published. I am not too sure on this, but I think they had an EU trademark, and since brexit have had to have it as a separate UK one, as this is on their application...
This case is filed pursuant to Article 59 of the Withdrawal Agreement between the United Kingdom and the European Union and the EU filing date was 05/10/2020.

Has their mark been registered yet, and if not could I oppose theirs too? I really dont want to, as their product is very different and dont see the need to oppose each others. Or, as they already have marks in other countries is mine a lost cause? Should I just withdraw. Any advice welcomed. Thank you

 

[Hughj11]

Could you share their application number?

Generally to oppose an application you need a registered trademark, so I would assume it’s registered.

Having marks in other countries doesn’t affect your chances here, unless they are extremely well known and are afforded reputation.

Note that you can’t oppose a mark whilst that mark is under opposition.

You need a trademark attorney to deal with this. You can drop me a message and I’ll see how I can assist.

 

[Witchwood]

Could you share their application number?

Generally to oppose an application you need a registered trademark, so I would assume it’s registered.

Having marks in other countries doesn’t affect your chances here, unless they are extremely well known and are afforded reputation.

Note that you can’t oppose a mark whilst that mark is under opposition.

You need a trademark attorney to deal with this. You can drop me a message and I’ll see how I can assist.

That's great. Thanks. Yes their TM is
UK00003606981
Mine is
UK00003643342
Thanks

 

[The Byre]

Considering the number of products and TMs with exactly the same name, it does not seem to be a very good choice of name - even if you can persuade the IPO to grant the TM.

Fresh Dog?

 

[Witchwood]

Considering the number of products and TMs with exactly the same name, it does not seem to be a very good choice of name - even if you can persuade the IPO to grant the TM.

Fresh Dog?

As you say there are a few with this name, but after I researched them, some are no longer trading and most of the others are in the Human food industry ( Hot dogs). Ours has been out there for a while now, and I've only now thought to TM it as we have a competitor intent on trying to copy everything we do.

 

[Hughj11]

Just so you're aware, a trademark doesn't have to be protected for the exact same goods/services in the specified classes to offer protection. If the goods and services from different classes are similar, or even if they are merely complimentary, there could be grounds for not only opposition but infringement.

They have claimed priority, so their mark is considered to have been registered in 2020 (once the registration process is complete).

You need to speak to an attorney and think about how much value that name is worth to you and if it will be worth fighting this. Many (if not all) offer free 30 minute consultations. You can find ones local to you through the CITMA website.