UK Trademark - Similar to Earlier Trademarks?

LinkBright Media

Free Member
May 15, 2010
293
34
I submitted a UK trademark application and have just received confirmation from the trademark office that, if I proceed with my application, they'll be contacting other trademark owners to notify them. They say "My initial view is that your trade mark and your goods are similar to the earlier trade marks and their goods and services." and the letter seems to be quite a general formality.

I'm not really concerned about the other trademarks except for one. I'll give you a similar example:

Let's say my logo is a cute cat illustration and the words FelixCat. I have applied to register both the logo and the word.

Someone's else's logo is a cat's bum/tail and the words FelixCatClub. They only have the logo trademark and not the word.

We have not registered in the same classes/categories at all, although there is some overlap.

To make things interesting I happen to have the domain FelixCat.Club whereas they have FelixCatClub.com . Perhaps I should ditch my domain name already! We are selling in a similar niche i.e. for cats, but our products are different. I sell a very small selection of my own design, own brand items. They sell other people's products on their branded website.

**note that all names above are examples which are SIMILAR, they're not the actual names.

The letter I received from the trademark office informs me that if someone opposes my application and wins, I will have to cover their costs. This is the bit that's making me uncertain!
 

Solicitor

Free Member
May 21, 2013
125
31
London
Without actually viewing their registered TM, it is hard to advise you. However, if they are notified by the IPO and they consider that your proposed registration will infringe their TM then they will object to the Registration. If you decide to fight their objection and lose, you will indeed be responsible for their costs.

From what you have written, it sounds as if there are definite similarities in the TM's and as you are selling in the same industry, they are not going to want you to have this TM as it could cause confusion and they will feel you are having the benefit of their goodwill.
 
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LinkBright Media

Free Member
May 15, 2010
293
34
I've now completely changed my domain name to avoid misunderstandings as much as possible.

I mentioned "we have not registered in the same classes/categories at all, although there is some overlap". Let's say 'cat biscuits' appear in the class I registered in, and also the class they registered in. If I remove the product 'cat biscuits' from my registration then there's no overlap at all except for two of the words in the logo.

If they decide to object, what costs am I looking at? Will it be my legal fees to fight their objection, plus their legal fees if they win?
 
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finest123

Free Member
Sep 21, 2014
76
7
37
Hi LinkBright,

We had a couple of issues with a recent trademark and I believe if they object to your trademark you have the opportunity to withdraw your application without any fees.

Your best to talk to @FrazerBye on here

He managed to sort out the issues we were having with a trademark from another company and we got it published
 
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