Withdrawing Trade Mark Application

[smeets]

Hi, I’m hoping someone can help with this query as it’s proving to be quite stressful sitting here thinking about it.

We put in a Trade Mark application with the IPO for our brand that has been going for 5 years, but a major high street retailer opposed it via formal opposition – they claim that our trade mark application is similar to a brand that they own and distribute within their stores. We've tried to mediate prior to the official opposition, however they simply wanted us to withdraw.

They claim that one of the two words we are using as our brand name, combined with the second word being very similar to their second word is together too similar to the sub-brand they sell in their stores. They also sell the particular type of item we do.

I’ve tried to mediate with them via their solicitor, but they simply want us to withdraw the application.

We now want to withdraw our application – I’m a sole trader running this business on the side, and have no funds if they try and take any further action. The business hasn’t even been doing that well so it’s not as though I have funds from that. We’ve had c.400 sales of the product over the 5 yrs. This was the year I was really going to push this business. In terms of going forward, I’d be okay with changing our name and starting fresh, but will that be enough for them? I’m concerned that they might try to get some money out of me e.g. compensation for (as they see it) benefiting from use of their name up until now.

We were completely unaware of their brand, and so would not even have been aware of any close similarities to their brand name when we chose our name.

I’m so concerned that they’ll try and sue me or something.

If anyone could advise on this I’d be really grateful. I suppose I just want to know if I withdraw the application, will they then also try and get financial compensation from me too?

Thanks for reading this.

 

[finest123]

without knowing the full details. You have attempted to talk to the retailers solicitor direct, this will always make them tell you to withdraw. Does not matter if you have a leg to stand or not.

I suspect they also have commutation from you which they could use in court if 'without prejudice' was not used

I know it shouldn't work this way but it does and of course only way to deal with it is to spend money. I do wish you posted before they start formal opposition as I am sure Frazer would of given you some free advice and would of given you the chance to withdraw.

In terms of going forward, I would see if Frazier on this forum to see if he can help. Just look in legal posts you will find him.

Please keep us all updated on you get on

 

[F_B]

Thank you for the recommendation finest123.

smeets- If you PM me the details of your trademark application I will check its status and give advice specific to your situation.

Generally speaking, if the opposition has not yet been launched you can withdraw your application and incur no further costs. If you have received a notification of intended opposition only this may still be the case.

Once it has been launched you are liable for costs if you withdraw/lose. If you have received notice of opposition and form TM7 then opposition has been launched. Costs are on a set scale from the UKIPO and is in the range £150-£3000. If you withdraw your application you would be looking at the lower end of that estimate.

You can either request withdrawal by writing to the UKIPO, or simply do nothing and the UKIPO will assume you are not defending your application.

Regarding infringement, does the opponent actually have a similar registered trademark for similar goods? If not they will not likely be able to pursue you for trademark infringement.

They may allege passing off, however this is very hard to enforce and they would require evidence of actual confusion.

Also, see if you can find out how long the retailer has been using the mark for. If your use pre-dates theirs you will enjoy a prior user right (this will be limited to the geographical areas where you have already used the mark).

 

[smeets]

Hi all,

apologies for the delay in responding to your replies. First of all, thank you for getting back to me.

@finest123 I completely wish I hadn't contacted the solicitor first.

@FrazerBye Thanks for your feedback. On the day after I posted, I spoke to a trademark attorney. Conclusion is I should just withdraw and start the business again under a different name, largely as I can't afford the potential costs associated with defending the application, and any other issues that defending the application might fire up

I have started brainstorming and looking to check if any of the names are in use as a UK trademark or a .com. Very difficult so far. He also suggested limiting the name to one word as two words or more could invite opposition from parties who have a claim over either of the two words. Very tricky finding a name, am only coming up with names with two or more parts

 

[finest123]

Hi Smeets,

Thank you for the update and I am glad you have got it all sorted, it can be a very stressful situation to be in. Let alone unfair as well, it seems if your a big business and have the money. You can pretty much get away with anything when your up against a start up or small business. Because they know you do not have the cash to spend on legal fees or the money to go to court. Even the court system is silly, if you win they only give you a contribution toward your costs. So no matter if your in the right or wrong It will still cost you a signification amount of money.

This is why you need a good Solicitor who understands this and does not just want to take you for as much as they can. I can see why they get a bad reputation, I have used four in total. two of them were money grabbers. The two I have found (one being Frazer), I found explaining the situation and making it clear that any work which will add cost to you, should always be agreed before hand.

Anyway, I hope you manage to sort a good name and do not have any issues with it. Made up words are good as its very unlikely anyone could object but they are not the best for customers remember.

 

[Anushrii]

Hello everyone,

This is a very informative post and i am glad you got this sorted.
I have just applied for a trademark registration and the IPO uk has informed that there is one other brand that has a similar name i.e. if our trademark is xyz abc then the other trademark is just xyz and sells goods in the same category. My question is knowing this can i withdraw my application for trademark even before it gets registered? What is the procedure. I want to avoid any legal costs.