Trademark quandary!

[The Byre]

A business associate and friend of mine has a trademark problem (of his own making!)

He has a minor paying hobby (TO c.a. £20k) that he is seeking to expand into a full-blown business making corporate language videos. The name he wants to use is also the former name of a bar-restaurant in Birmingham that ceased trading three years ago.

He has been actively trading under this name since 2002 and wants to register the TM "(NAME) Studios". The IP Office has written and declined permission because of the bar name in Birmingham as both are in the same very broad category - Class 41.

There are many companies in the UK trading under this name such as furniture shop in East London, a software company in Hertfordshire and most relevant of all, a theatre and restaurant in Cornwall and a hotel in Scotland all of whose activities predate the opening of the bar & restaurant in Birmingham.

At no time did the TM owner or any representative or licensee of the TM owner registered any complaint, cease-and-desist demand or claimed 'passing-off' with any of the many businesses trading as (NAME) or in any other manner sought to defend their trademark against the use by other companies, despite the fact that many of them are trading within their field and classification.

The bar & restaurant is today called something completely different and is an Italian restaurant that opened in December 2016. The registered trademark is not actively attached to any current business activity but has not been dormant for the required five years for a non-use move to cancel.

I suggested that he uses his main company's name, but that is a suggestion that fell on stoney ground!

He now has two months to oppose the denial of registration. I suggested limiting his listed activities to language videos and allowing the application to proceed.

Any further bright suggestions from those in the know about TM law?

 

[surreyaces]

Hi, The Byre.

The IPO can't refuse a trade mark application on the basis of a third party trade mark registration, the owner of the earlier mark would need to oppose.

What the registry can do though is tell your friend that is considers his/her trade mark to be too close. I suspect that this is what has happened here. Your friend can still proceed with the application. However, if he/she does so then the registry will probably tell the owner of the earlier mark about your friend's application. Even so, in the circumstances, it seems unlikely that the owner of the earlier mark would want to oppose.

In any event, your suggestion to amend to language videos seems sensible

Hope this helps!

 

[The Byre]

Thanks - I shall suggest (tomorrow) that he calls the lawyer working fulltime for the TM owner and asks what their attitude might be. The reason they closed the restaurant and bar was that they received dreadful reviews on TripAdvisor and elsewhere and trade had slowed to a mere trickle.

Reawakening that TM would have little benefit and my friend has been making videos under that name for many years, albeit as a side-line so I kind-of 'get' why he wants to keep the name - a lesson to us all. Register that bloody name before someone else does!

I have since discovered that he has not even registered the main company name! Bloody Nora is all I can say!

 

[Robin @ SH&P]

Hi The Byre,

As surreyaces has rightly stated, the application cannot be refused by the IPO on the basis of this or any other earlier right. The rules on this changed back in 2008.

The earlier right TM owner will be notified of your friend's application and will be invited to oppose it if they wish to do so. If they do not, you will have the comfort of knowing that they are aware of this application but have no interest in contesting it. The assumption there is that neither would they have any interest in contesting its use.

The opposition period is 2 months and can be extended by a further month on request by any interested party.