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  • #989330
    sejades
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    Hi

    I have a trademark for my small Internet service business and have just found out that someone in the UK proceeded with an identical name in the same category which was granted about two months ago.

    I understand that a UK trademark is not an Australian trademark but do I have any options or recourse to challenge it as they are essentially offering the same type of service under the same name, or did I simply leave it too late?

    Thanks in advance.

    #1171622
    ontherunway
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    I am by no means an expert on this, but my understanding is that you have to register a trademark, by country and by category. Has the UK person registered this trademark in Aus? If it is just registered in the UK you should be okay…..

    Then there is the ‘use it or lose it’ thing . i.e. to ensure protection you have to demonstrate use…. so if they don’t use it … that’s an opening for you, but I think the process of arguing this is time consuming and expensive….

    anyway, as I said I am no expert…

    #1171623
    sejades
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    Thanks for the quick reply.

    No, I have an existing trademark in Australia and they’ve registered in the UK, but as we’re both providing an Internet service there’s no real geographical boundary, hence my concern.

    They are actively using the trademark and have registered the .co.uk variations of the domain name. I am worried that the competitors trademark will effectively water down my own brand.

    #1171624
    Craig.Smith
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    It’s my understanding that you need to register the trademark for each country otherwise you don’t have a leg to stand on. However it’s best you follow up with a trademark lawyer for the best advice.

    #1171625
    JacquiPryor
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    Hi There,

    Previous comments are correct, trademark registration is country by country. If they have fully registered the mark in the UK then they have been effectively granted the right to use their mark in the UK for the relevant goods/services (just as you have been granted this right for Australia by holding a registered trademark here).

    If the UK trademark has not yet fully registered but has been approved then it may be open for objections to be filed, where you could lodge an objection. (You will recall from your Australian application it will have gone through an opposition period on set dates; this happens on UK marks too). However, you would need to have grounds to do this (purely as an example, such as having used that same trademark in the UK before they first used the mark or filed the mark etc). Such a process can be very lengthy and potentially costly. As you are dealing with the UK trademarks office it would be encouraged that you engage a UK trademark firm to assist who are experienced with UK Trademark Law.

    Assuming they are fully registered over there as you are here then as noted you each have your respective rights. This publication from the World Intellectual Property Organisation will provide some information as to the view taken about trademarks and the internet, including proposed guidelines around infringement.

    for example and in brief only, if they use/promote in Australia there would need to be consideration as to the level of use. If you were to allege infringement they would not be liable for that prior to receiving your notice if they hold registration in another country governed; once put on notice, they would be expect to quickly take steps to ensure no commercial conflict with you. These guidelines also suggest infringement is avoided if the party was to place clear disclaimers that there is no relationship with you and/or they refuse delivery to Australia etc.

    The above is for information purposes only and is not advice. Each situation needs to be judged on its own merits, and there can be circumstances that alter the ‘usual’ course of these things (such as a prior right to a name if they actually used it in Australia before you first used or registered).

    I hope the above assists. Feel free to send me a PM if you want to discuss in more specific detail.

    #1171626
    sejades
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    Thank you Jacqui for that comprehensive reply which confirmed my original suspicions. Unfortunately I didn’t discover the UK application until about a month after it had received final approval.

    #1171627
    JacquiPryor
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    Just to be sure we’re on the same page “Final Approval” could be different to registration If it’s been approved (even if a month ago) it may still be open to oppositions if justified. If it is showing the status of registered then unfortunately it’s likely too late to lodge any formal objection.

    Of course your registration in Australia provides you the safety to promote and sell in Australia. I would suggest that if you actively promote/sell into any other countries you perhaps consider registration of your trademark in those countries to protect yourself against a similar situation arising in another country as you’ve experienced in the UK. Again, happy to discuss more specifically if you’d like to send me a PM.

    All the best,

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