Trade Mark Opposition Success in the UKIPO
Where an individual or entity seeks to register a trade mark that is considered similar to an existing Mark, the owner of the existing Mark may oppose the application on the grounds that the “applied for” Mark causes damage or detriment to the registered Mark. This was the situation in a case where we at KANGS successfully represented a foreign client before the UKIPO in a trade mark opposition.
Our client (the Opponent), a longstanding and reputable company, with a series of domestic, European and UK trade marks sought to oppose a trade mark application filed in September 2021.
The application lodged was founded on a number of grounds:
- s3(6) Trade Marks Act 1994
- s5(1), s5(2a), s5(3) Trade Marks Act 1994
Stuart Southall of KANGS explains how he as both litigator and advocate achieved this successful outcome.
The Case
As part of the proceedings, the Applicant sought to put the Opponent to strict proof in respect of a number of the matters pleaded. In being put to strict proof on the matters raised by the Applicant, our client established that:
- it had goodwill and reputation within the EU and the UK,
- there was an unfair competitive advantage being sought by the Applicant,
- the likelihood of confusion on the Marks was significant, and
- the Applicant had submitted its application in bad faith.
The Tribunal was satisfied that the grounds under s5(2a) were partially met and so, the opposition was successful in that part. The Tribunal then considered the remaining grounds s5(3). Against this opposition claim, the Tribunal found that the Opponent did not meet the threshold.
With regards to s3(6), the most important element of the opposition, the Tribunal found that the Opponent succeeded in its entirety.
A costs award was also made in favour of our client, the Opponent.
This case assists in highlighting the significance of suitable Trade Mark protection and ensuring that the Mark(s) covers the salient services undertaken and the right steps are taken to protect the Marks.
The Legislation | Trade Mark Act 1994
Section 3 of the Act states that:
s3(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
Section 5 of the Act states that:
s5(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
s5(2) A trade mark shall not be registered if because;
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected.
s5(3) A trade mark which;
(a) is identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom.
How We Can Assist in Trade Mark Disputes
The primary ground of opposition in the case was ‘bad faith.’ This concept is not clearly identifiable, with neither statute nor Case Law providing complete resolution. As a result, there remains considerable scope for argument, depending on the specific circumstances of each dispute.
If you find yourself facing a trade mark dispute or any other intellectual property issue, obtaining specialist legal advice is crucial to protect your interests and identify the most effective way forward.
Our team at KANGS has extensive experience in all aspects of Intellectual Property law and would be delighted to hear from you. Contact us using the details below:
Tel: 0333 370 4333
Email: info@kangssolicitors.co.uk
We provide initial no obligation discussion at our three offices in London, Birmingham, and Manchester. Alternatively, discussions can be held through video conferencing or telephone.
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