Trade mark Refusal Lawyers

Trade Mark Refusal Expert Lawyer

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PAIL® Solicitors offer expertise and over a decade of experience in trade mark registration and disputes. Contact us using the above form or at peter@pailsolicitors.co.uk or on 0207 305-7491 charge rates may apply and may vary).

Can you be unsuccessful in trade mark registration?

Yes, you can fail in your trade mark registration strategy for several reasons.  Before registration, your trade mark could be refused under absolute or relative grounds for refusal. After it is registered, your trade mark could face opposition proceedings and or lose rights in your trademark through expiry, surrender, declaration of invalidity, or revocation. 

Can I conduct a search of the trade mark register?

Yes, and it is advisable to do so. 

The IPO will not inform applicants of expired marks when considering the registration of a mark. Clearance searches by applicants should extend to marks that have expired less than a year before the application. A trade mark can be renewed or restored up to twelve months post the date of renewal.
 
You will not be liable for infringement, should the owner of a renewed or restored mark try to stop your use of that mark for the period while the trademark was expired, as long as you used it in good faith.

Is there a difference between oppositions, declarations of invalidity and revocation of a trademark?

Yes, they are all very different proceedings.

What are the available claims and defences for trademark infringement?

These include:

• A defendant may ask the owner of a trade mark to prove its use during the five years before the start of the trade mark infringement action where infringement proceedings are on a registration greater than five years old. Alternatively, in the five years since registration, the mark has been used, or give reasons for non-use.

• The own name defence does not apply to a corporate name.

• Trademark owners may prevent the use of their trade marks in comparative advertising under Article 4 of the Misleading and Comparative Advertising Directive 2006/114/EC. 

• Infringing acts include trade name use of a protected trade mark. 

• Where there is a risk that the packaging, labels, tags to which the trade mark is attached will be used to infringe trademark, you are entitled to prevent preparatory acts such as sticking a trademark to packaging, and selling or offering them for sale or stocking, importing or exporting them.

• It is okay for a defendant to ask the owner of a trademark to prove its use during the five years before the start of the trademark infringement action where infringement proceedings are on a registration greater than five years old. Alternatively, in the five years since registration, the mark has been used, or give reasons for non-use. A defendant is not required to bring a separate counterclaim for revocation.

What do you need to apply for trade mark revocation?

You can apply for revocation of trade mark registration if:

• Within five years the mark has not been put to genuine use in the UK, and there are no proper reasons for non-use;

•  use has been suspended for five years, and there are no proper reasons for non-use;

•  in consequence of inactivity it has become a common name in the trade for the product; or

• as a result of the use made of it by the owner or with the owner’s consent concerning its registered goods and service, it is liable to mislead the public, particularly as to the nature, quality or geographical origins of products and services.

Useful Links 

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