Protecting Your Brand: The Growing Rise in Trade Mark Oppositions
Trade mark and copyright infringement by competitors is a prospect most companies and small businesses fear, for good reason. They are expensive and a business’s brand and reputation are often at stake. Businesses need to stand ready to protect their brands.
Unfortunately, trade mark disputes can be unavoidable. Brands are a business’s key asset and should be protected as such, and if it is threatened – action needs to be taken.
So it’s somewhat concerning – if not surprising - that new figures from the Intellectual Property Office (IPO) reveal that the number of UK trade mark disputes more than doubled last year compared to 2020. The increase comes in the wake of Brexit, which saw the UK permanently leaving the EU trade mark system.
Previously, businesses could apply for a single EU trade mark which protected their assets in the UK and across the EU. From the start of 2021, the IPO created comparable registrations giving a corresponding UK right for businesses to ensure continued protection.
The effect of this is that any new trade mark application for protection across both the EU and the UK now need to be made in the UK, as well as in the EU, if businesses want to continue to protect their valuable brands(note that there are specific rules also relating to renewals).
An opposition to an application must be made within 2 months of the ICO’s publication of a notification to an earlier trade mark right holder.
It’s understood that there has been an influx of applications by businesses because of the change – prompting an increase in oppositions and resulting disputes. It is for the IPO to determine whether or not to grant the application if opposed. If an opposition is successful, the applicant will be liable for a significant part of the other side’s costs.
The increase serves as a salutary reminder that businesses and entrepreneurs need to take specialist advice on the early and effective protection of their intellectual property (IP) rights. Key steps to consider include:
· Checking by way of a ‘clearance search’ any existing registration of a trade mark for your chosen brand name.
· Submit your application to the UK without delay and, if necessary, a separate application to the EU – before anyone else submits their application first.
· Once you’ve secured trade mark protection, keep a close eye on potential infringement from another business and assert your rights if necessary.
· Renew your registrations on time to avoid the risk of protection lapsing – leaving your brand highly vulnerable.
Key takeaway
All businesses and startups should pay close attention to the protection of their IP rights to minimise the risk of trade mark infringements and disputes. It would be prudent to take specialist advice from experienced IP lawyers.
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