Trademark - Potential Issue

[Lifestyle18]

Hoping someone can help or advise on this.

I have been running a business now for over 12 years. I have only just decided to trademark the brand name but in doing so and submitting the application it has transpired that a similar brand name is already registered. My application has not been refused however I have been asked if I wish to continue with the potential of objections from the other brand owner.

To give you an example, my brand would be 'RainfallUmbrellas' whereas the registered alternative mark is 'Rainfall'. But both cover the same class of products.

The registered mark appears to be from a larger umbrella company in Australia. I do not believe that they continue to trade with this brand and I do not think that they have been trading with it since I have been trading. But they do continue to re-register it.

I am concerned that if I rock the boat then they may object to me trading at all under my existing name and I would have huge problems. Best case scenario they do not object but the worst case scenario scares me with potential legal costs.

They have a Intellectual Property representative name which is a legal firm in London. I wondered whether I should give them a call and ask their advise, but again, not sure I should rock the boat!

Does anyone have any advise or experience?

 

[Paul Kelly ICHYB]

Looks like an obvious one to spot before submitting the application.

If you have already submitted and its been published, their IP company/solicitors should already have picked this up.

Your options are:
1 Stop the application, hope no one notices and you can carry on, as is.
2 Proceed with the notice and nothing happens (unlikely, as the legal will want to make some money)
3 Proceed, they object and
a - you agree mutual use
b - they stop you using the brand.

Using an IP expert may have stopped you getting this far (with a cost) however, the question now is, how much risk will you take and/or how much money/time do you have to fight this?

 

[fisicx]

Is there likely to be any confusion between the two brands?

If you were in different product groups there wouldn’t be a problem (see how many Amazons are registered) but as you both do the same thing an objection could well be forthcoming.

 

[Panoramix IP]

If you have been using the brand name for 12 years, you likely have goodwill in the brand. This may provide basis for negotiation with the earlier trade mark owner. If they have not used the trade mark in the UK for a continuous period of 5 years you would be able to apply for cancellation of it for relatively little expense.

 

[Soulstudio]

If the worst-case scenario happens and they object, you could explore co-existence agreements, which might allow both brands to operate without conflict. This could also show willingness to compromise, reducing the likelihood of aggressive legal action.

 

[hazeleigh]

Hoping someone can help or advise on this.

I have been running a business now for over 12 years. I have only just decided to trademark the brand name but in doing so and submitting the application it has transpired that a similar brand name is already registered. My application has not been refused however I have been asked if I wish to continue with the potential of objections from the other brand owner.

To give you an example, my brand would be 'RainfallUmbrellas' whereas the registered alternative mark is 'Rainfall'. But both cover the same class of products.

The registered mark appears to be from a larger umbrella company in Australia. I do not believe that they continue to trade with this brand and I do not think that they have been trading with it since I have been trading. But they do continue to re-register it.

I am concerned that if I rock the boat then they may object to me trading at all under my existing name and I would have huge problems. Best case scenario they do not object but the worst case scenario scares me with potential legal costs.

They have a Intellectual Property representative name which is a legal firm in London. I wondered whether I should give them a call and ask their advise, but again, not sure I should rock the boat!

Does anyone have any advise or experience?

• • You have been trading under your brand name for over 12 years. This gives you common law rights in the UK, including potential protection under passing off. These rights could bolster your position if challenged, provided you can prove:
    1. You have built goodwill in the name.
    2. There is misrepresentation by the other party (if they trade).
    3. Damage to your business could result from confusion.
• Evidence of Non-Use:
  • If the Australian company has not used their trademark in the UK for the last 5 years, you may have grounds to apply for revocation for non-use. This could eliminate their mark as an obstacle to your trademark application.

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• Do Nothing for Now:
  • Continue trading under your name without pursuing the trademark. While not ideal, this avoids potential conflict and retains your common law rights.
• Proceed with the Application:
  • Continue with your application and wait to see if the other party opposes it. If they don’t, you secure the trademark. If they do, you can assess their arguments before deciding whether to contest or withdraw.
• Contact the Trademark Owner’s Representative:
  • This could provide clarity on their position. However, it risks "alerting" them to your application, which could trigger an objection.
• Apply for Revocation of Their Trademark:
  • If you have evidence that the Australian company hasn’t traded under the mark in the UK for 5+ years, you can challenge their mark for non-use. This is a bold move but can resolve the issue decisively.

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4. Recommended Approach​

• Gather Evidence:
  • Collect evidence of your use of the brand over the past 12 years, including sales, marketing, and customer recognition, to support any future disputes.
  • Investigate whether the Australian company has traded in the UK under the registered mark in the past 5 years. Hope this helps