The UK Intellectual Property Office has recently published a report showing that a record number of trade marks were registered last year, which represents a 75% increase from 2020. It may not come as a surprise, then, to learn that finding a trade mark that isn't similar to an earlier registration is becoming increasingly difficult. So, if you're looking to register a trade mark, but there are already similar marks registered, what should you do?
Fortunately, in the UK, unlike other jurisdictions, a similar earlier trade mark is not in and of itself fatal to your application. Instead, it will be flagged by the UKIPO, and you will be asked if you still wish to proceed with your application. Should you decide to do so, your application will be published, and it will be incumbent upon the owners of any similar trade marks to raise an opposition to your application (check out our useful guide if your trade mark application has been opposed). This process differs from other countries, such as the US, where trade mark examiners will refuse your application if it is similar to a pre-existing trade mark without requiring the earlier trade mark owner to oppose it.
Assuming you do decide to move on to the publication stage (which is normally the best thing to do), you'll have to wait and see what the owners of the earlier trade marks decide to do. Broadly speaking, they'll have the following options:
- File a Notice of Threatened Opposition (also called a TM7A). A Notice of Threatened Opposition automatically extends the two-month publication period by one month, gives you some details on who the opponent is, and warns you that opposition is likely to be filed.
- Write a letter. A letter will most likely be written by their legal representatives and could be sent in conjunction with a Notice of Threatened Opposition. Sometimes the letter will ask that you withdraw your application. In contrast, in more borderline cases, you might be invited to make some limitations to your application to avoid a full, formal opposition process.
- File a formal opposition without notice. This isn't good practice (and there can be adverse cost implications for the opponent) but it does sometimes happen.
- Do nothing. If an owner of a similar mark doesn't notice your application or decides not to raise opposition, you'll have no issues, which is obviously a great result. As such, it's a reason to publish your application in the first place, but it is becoming an increasingly rare outcome.
Fortunately, even with the more aggressive responses to your application, you'll still have time to take legal advice and engage with the process before any decision is made.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.