Kent Solicitors

You may decide that you want to register your Trade Mark

Your TM may be quite well known in your locality and you may be thinking of franchising, but now that the world is shrinking at an alarming pace, to your horror, you find that someone, on the other side of the country, has already registered something identical or similar

TMA Section 5 says that a Trade Mark will not be registered if:

It is identical to an earlier trade mark and the goods or services for which registration is sought are identical to the goods or services for which the earlier trade mark is protected.

It is identical with or similar to the earlier trade mark and the application for registration is in connection with identical or similar goods and services for which the earlier trade mark is protected, and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.

It is identical with or similar to an earlier trade mark and the earlier mark has a reputation and the use of the later mark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier mark

Ok, so the first one is simple, they are either identical, or they are not

The next two involve require evidence as to the likelihood of confusion or the earlier reputation - and so if you proceed, you may get dragged into an argument with the Registry and litigation with the registered owner

You will spend much time effort and money gathering your evidence, and so will he

Until you see his evidence and compare it with yours, you will not be able to gauge the success, or otherwise, of the outcome. Even then, it might a fine call and you will need to have the question expensively decided for you

The moral is: get your TM registered ASAP

If you have already invested time effort and money in promoting your TM, you need to decide whether to spend more (readying yourself for a fight) or back another horse.


Michael Breeze Mobile: 07 900 195.195 email: mdb@kaslers.co.uk

Labels: Trade Marks