It’s impossible to walk down the high street without seeing a recognisable logo or a well-known brand. As a company’s branding is synonymous with its identity and can make the difference in customer choice, protecting that image is key.
Registered trademarks, copyright protection and registered design rights, all come under the umbrella of Intellectual Property Rights and any organisation looking to protect its valuable brand identity must take them into consideration.
To protect these rights a company or individual should apply to the Intellectual Property Office (IPO) to register a word, phrase or even image in a particular class as a trademark relating a business area. This will prevent other companies or individuals from using that asset in the same class under which it is already registered.
But what if a company becomes aware that another party has attempted to register a trademark for a similar or identical mark to one already protected?
Whether a company discovers this through IPO notification or as a result of hiring a company to monitor its intellectual property, there are a few steps to take:
- File a notice of ‘threatened opposition’ with the IPO within two months of the date that the new mark is published in the Trade Marks Journal. This will halt the application process and extend the date for opposition by a further month;
- Attempt to contact the applicant to see if they will revoke or amend their application to ensure that the marks are sufficiently different to avoid confusion amongst the public;
- If the applicant refuses to revoke or amend their application a company can file a ‘notice of opposition’ referring to the relevant grounds on which the opposition is made.
After a ‘notice of opposition’ has been filed, the applicant has two months to file a counterstatement, though if in the meantime negotiations have commenced between the company and the applicant a delay to the process in order to further negotiate can be applied. Alternatively, the parties can choose to push through to a hearing by the IPO. The IPO will then have the final decision as to whether or not the application for the new mark will be accepted.