Trademark query

[Vincenttt]

Hi,

I incorporated a company and registered a brand trademark in the UK back in 2016 as I began a period of recipe development for my food product.

I am set to commercially launch the product in the first half of this year however, on searching Google for my company name on the first page of results appears a very similarly named company making the same product as mine, based in Ireland. I don't want to provide any identifiable information but suffice to say the names are as similar as "Sunlight" and "Sunlamp".

This second company appears to have commercially launched in the last 5 months but I cannot see that they have trademarked their name either in Ireland or anywhere else.

While it does not appear that they are currently exporting their product to the UK I am interested to know what I preemptive in action I could take to further protect my brand name, both in the UK and internationally.

Thanks.

 

[AdamTMA]

Hi Vincent,

It'd be sensible for you to file trade mark applications in the countries in which you are trading, or expect to be trading in the next 3-5 years - before the Irish entity do so. There are a number of ways to go about this, as covered in our blog post here https://tma.eu/Can-I-get-a-worldwide-trade-mark and our FAQs https://tma.eu/faqs/.

I hope those links help?

 

[Vincenttt]

Hi Vincent,

It'd be sensible for you to file trade mark applications in the countries in which you are trading, or expect to be trading in the next 3-5 years - before the Irish entity do so.

Thanks for the advice!

What would be the impact of me registering in Ireland, on this other entity.

There is no absolutely no suggestion that they have formed their company with any intention to mislead however, given the close similarity of the brand names, I want to ensure that if/when I export to Ireland there will be no confusion on the part of consumers.

 

[AdamTMA]

If you apply in Ireland before they do, you stand a much better chance of getting a registration (assuming there are no other issues with the application). It is possible that they could oppose your application based on the earlier unregistered trade mark rights they acquired by using the mark - but this would be unusual.

Likewise, they could invalidate your mark after it is registered on the same grounds, when they did find out about the application (perhaps when theirs is refused because yours is already on the register). In practice, this is relatively unusual (although it does of course happen). If they were threatening to do this, and you thought they had a good chance of success, a coexistence agreement may be appropriate.

In short, getting the trade mark application in before they do gives you the upper hand.