Withdraw trademark application or persist and risk opposition? So torn.

[May Holden]

Hi all,

I am new to UKBF and would really appreciate some advice.

I have an e-commerce B2C business which has been trading for a year.

I previously trademarked my company name under Class 3 products. This trademark was granted with no opposition.

I have now expanded my product line and have applied for a trademark for Class 8 goods. The intellectual property office has replied stating that there is a business with a very similar name in the Class 8 category and if I were to go ahead, they would inform the business of my application. To give an example of the similarity of the name, let's say my business is called "APRIL" and there's is called "APRIL PINK".

I have researched the business in question: they operate out of South East Asia and sell their products online in SE Asia. They have registered a ltd company here however have assets of £1. They do not have a U.K. presence. They do not sell in any physical stores in the U.K. They are available on one third party website which delivers their product in the U.K. They began trading prior to me.

Their trademark is registered with a law firm in the U.K. and therefore if I were to go ahead with my trademark application, the application would be sent to this law firm and I think it would be very difficult to fight against a law firm given that I am a one woman band.

My options as I see it:

1] Continue with my trademark application, which would be seen by this company's law firm and highly likely lose against them. Then have to change my entire business name.

2] Continue with my business without registering for the additional Class 8 trademark. This company does not have a presence in the U.K. therefore I find it highly unlikely that they will even know of my business or seek me out for using a name that bares some similarity to theirs.

I would really appreciate your thoughts and help with this.

May

 

[Mr D]

Can you not use a different word for the class 8?

 

[May Holden]

Thanks for your reply, I appreciate it.

I'm not sure how I would do this. For example, my business is called "APRIL". It is registered in Class 3 already. If I registered a different word for Class 8 then I would also need to call my products in class 8 that word and would not be using my actual business name for the products..does that make sense?

It would be like having some products on the website marked as by the company "APRIL" then other products sold as though they are from a different company.

Would be grateful if you could tell me if I am missing your point!

 

[Mister B]

Well, I'm no legal expert, but for what it's worth, here's my two cents:

1. If you continue with the application, how do you know that they will object? Are the product lines similar? If the EU is of little or no interest then they may disregard the application. This happened when we registered our mark, some ten years ago, and the other party simply ignored the notification. If they do contest it, it maybe that you could enter into dialogue with them and secure permission to use the name in the UK only.
2. In my opinion, if you're keen to grow the business, I would still register in the additional class. Far better to encounter and remove any potential obstacles before the business grows. To resolve differences later down the line would be far more problematic.

Mister B

 

[May Holden]

Thank you Mister B

1. I am unsure if they will object, but I guess when I saw that they have a law firm who registered their trademark on their behalf and therefore my application will go to the law firm, I felt the law firm will most likely want to object this on behalf of their client. In terms of product lines, they have registered product lines in Class 8 but are not actually selling them; let's say as a fake example they have registered cosmetics, creams, deodorants and gels but they are only selling deodorants.

I wish there was a way I could fly under their radar otherwise if I actually oppose it, I will then definitely need to rebrand my business. I am also a pretty young entrepreneur therefore feel quite intimidated at the prospect of going up against a law firm on my own. So this is all quite stressful.

 

[Mr D]

Thanks for your reply, I appreciate it.

I'm not sure how I would do this. For example, my business is called "APRIL". It is registered in Class 3 already. If I registered a different word for Class 8 then I would also need to call my products in class 8 that word and would not be using my actual business name for the products..does that make sense?

It would be like having some products on the website marked as by the company "APRIL" then other products sold as though they are from a different company.

Would be grateful if you could tell me if I am missing your point!

No reason that every product you sell must be trademarked 'APRIL'. Some companies have multiple trademarks for different products with different names.

 

[May Holden]

OK sure I am starting to see what you mean. Thank you.

Let's use Apple as an example. Let's say they had trademarked the company name "apple" under a class that covers the iphone only.

They then want to extend in to a different category, like smart watches, but someone has already trademarked "apple" in the smart watch category.

Could they use a different name for their laptops and trademark that, but still operate under the company name "Apple"? For example, trademark "Macbook" but then sell it under the apple brand. That is basically the situation I am in.

 

[Mister B]

Do you have competing products? That will play a big part in how they would respond to any application. Again, as an example, we used the word Trek in one of our applications, and it was objected to by Trek Bicycles who are absolutely mahoosive. We had a sensible chat with them and as long as we agreed not to use the word Trek in anyway that would have infringed their mark, they let us proceed as planned. All very civil, but I understand that all IP lawyers are not quite as encouraging.

One more hypothetical question if I may: How big do you want to take your business? Imagine yourself in five years time, seven figure turnover and the world is your lobster. Should the competing business find you then, you may find it very costly to both fight and compensate them for any past infringement. Conversely, had you resolved the issue five year previous to your satisfaction, the path ahead would be wide open.

Your call though, however you wish to proceed I wish you luck. I'm sure that others will be along shortly to offer their thoughts.

Mister B

 

[May Holden]

Thanks Mister B. Appreciate your advice. I do want to continue expanding the business so I guess it sounds better to face this head on and hope they don't oppose. If they do, going to need to learn very fast how to deal with that situation myself as we aren't profitable enough yet for lawyers. Thanks for your advice. Would be keen to also hear others' thoughts on how they would proceed with a situation like this.

 

[Panoramix IP]

I wouldn't worry too much right now. You have already paid the application fees so why not just continue with the process and just see what happens. Any one can file a notice of intended opposition within 2 months of your TM application being published in the official trade mark journal. If they do this then they get another 1 month to file the opposition. The IP law firm will not file a notice of intended opposition without their client's express instruction. Even if they do, it doesn't mean that they will follow through with filing the opposition.

I am an IP lawyer and can offer limited pro bono advice for things like this. If your application does get opposed I would be happy to point you in the right direction at no cost so you can respond accordingly.

 

[obscure]

2] Continue with my business without registering for the additional Class 8 trademark. This company does not have a presence in the U.K. therefore I find it highly unlikely that they will even know of my business or seek me out for using a name that bares some similarity to theirs.

This is a bad idea. It amounts to ignoring the problem and hoping it goes away.... but it won't. It will hang over your head for as long as you use that name. It doesn't matter if you register or not, if you use that name (without resolving the issue) you risk being sued for trademark infringement.

Of course they may never find out.... provided your company is a failure. But what if it is successful and customers start posting reviews online or bloggers write about you and this all starts showing up in search engines? And maybe during that time they have ramped up their UK operation and decide that your mark is too similar. They can not only opt to sue for infringement but they can ask the courts to take into account the amount of time you have been infringing and can even ask for all profits earned during that time to be paid to them.

You need to resolve this one way or the other. Either...
1. Use a different name or
2. Continue with the application

If you opt for option 2 there is a chance they may not object. You register the mark and you are good to go. Or they may object; in which case you find out now, before you have spent years using the mark and investing in it, and can decide to either fight or pick a new name.

 

[May Holden]

I wouldn't worry too much right now. You have already paid the application fees so why not just continue with the process and just see what happens. Any one can file a notice of intended opposition within 2 months of your TM application being published in the official trade mark journal. If they do this then they get another 1 month to file the opposition. The IP law firm will not file a notice of intended opposition without their client's express instruction. Even if they do, it doesn't mean that they will follow through with filing the opposition.

I am an IP lawyer and can offer limited pro bono advice for things like this. If your application does get opposed I would be happy to point you in the right direction at no cost so you can respond accordingly.

Thanks very much Kevin. I really appreciate you taking the time out of your day to respond. Yes I think I agree, I would rather just submit and hope for the best. Thanks for explaining the difference between intended opposition and actually filing the opposition. I hope it goes under their radar and the trademark goes through however if they do file an opposition I would be very grateful for limited pro bono advice. Many thanks again. May

 

[May Holden]

This is a bad idea. It amounts to ignoring the problem and hoping it goes away.... but it won't. It will hang over your head for as long as you use that name. It doesn't matter if you register or not, if you use that name (without resolving the issue) you risk being sued for trademark infringement.

Of course they may never find out.... provided your company is a failure. But what if it is successful and customers start posting reviews online or bloggers write about you and this all starts showing up in search engines? And maybe during that time they have ramped up their UK operation and decide that your mark is too similar. They can not only opt to sue for infringement but they can ask the courts to take into account the amount of time you have been infringing and can even ask for all profits earned during that time to be paid to them.

You need to resolve this one way or the other. Either...
1. Use a different name or
2. Continue with the application

If you opt for option 2 there is a chance they may not object. You register the mark and you are good to go. Or they may object; in which case you find out now, before you have spent years using the mark and investing in it, and can decide to either fight or pick a new name.

Thanks very much Dan. Yes I definitely agree and can see just avoiding the problem will create an even bigger problem later on down the line. Will face up to it now and hopefully it gets resolved. I absolutely do not want to be in a situation years down he line where they take me to court so will bite the bullet and face up to this now. Many thanks again. May

 

[Panoramix IP]

Thanks very much Kevin. I really appreciate you taking the time out of your day to respond. Yes I think I agree, I would rather just submit and hope for the best. Thanks for explaining the difference between intended opposition and actually filing the opposition. I hope it goes under their radar and the trademark goes through however if they do file an opposition I would be very grateful for limited pro bono advice. Many thanks again. May

I would be happy to help. Just let me know. Fingers crossed all will be fine.