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Increase in trademark disputes means businesses need to know how to protect brand

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It is worth explaining what is meant by a trademark “opposition”. The owner of a registered trade mark or an established business name with goodwill has a right to object to the registration of a similar trademark which is likely to cause confusion on the part of the public between the two businesses. 

In addition to an increase in the number of trademark oppositions, the number of applications for registered trade marks also continues to rise. 

What explains the increase in applications and oppositions  

The increase in applications is easier to explain. Businesses of all sizes increasingly understand the value of intellectual property and are taking more active steps to protect IP. 

While many bosses will not feel they have patentable technology or significant copyright works which are likely to be infringed, almost every business will have a trading name or brand that it wants to protect. The trademark system therefore represents at entry point for many businesses thinking about intellectual property. 

If a business operates online, having a registered trademark is especially useful. For example having a registered mark makes it much easier to force website hosts to take down copycat websites.

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The cost of protecting trademarks has also dropped in recent years. For example the application fee for filing a European trademark has reduced in recent years and the fees are likely to fall again soon.

Many UK bosses are able to secure exclusivity for their brand over certain goods and services for as little as a few hundred pounds. This is a small price to protect goodwill and reputation.

While the number of applications has increased steadily over a number of years, the number of oppositions filed is increasing more rapidly. Previously many businesses were content to register a trademark as a defensive measure and then do very little to enforce the mark by filing oppositions to similar marks seeking registration later. This no longer appears to be the case. 

What can explain this

Part of the reason is likely to be increasing awareness. Businesses are more aware of the need to take proactive steps to protect a trademark. 

The guidance available from the UKs Intellectual Property Office (IPO) about how to file an opposition is very good and constantly updated and our experience is that the IPO has become much more user-friendly in recent years. Many businesses may feel able to handle a simple opposition without needing to instruct lawyers with all the attended cost which that can generate. 

A fast-track opposition procedure was introduced by the IPO in 2013, which is a useful option for businesses which are not legally represented.

Technological tools such as Google alerts increasingly warn businesses of competitors who may be using similar brands or seeking to register similar trade marks or company names. If companies are being alerted to similar brands being registered then they are much more likely to file an opposition.

While more oppositions are being filed this does not necessarily mean a significant increase in formal tribunal proceedings. It remains the case that the vast majority of oppositions are settled amicably. 

As Skype was refused a trademark for sounding too much like Sky in 2015, we decided to take a look at some of the more interesting trademark cases of the past few years.

Guy Wilmot is a partner in the corporate and commercial Team at Russell-Cooke.

Image: Shutterstock



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