As well as advising how to protect brands through trade mark registrations, we also offer watching services for brand owners so you can take a proactive attitude to protect your brand.

It is great to have your mark registered, but effective brand protection does not stop there.  The Intellectual Property Offices grant registrations but are not interested in policing the trade mark rights – that is firmly the job of the trade mark owner.

Indeed, many IP offices (including the UKIPO and the EUIPO) do not even examine trade mark applications for “relative grounds”; meaning they will not refuse to register a mark that is similar to others, but will instead leave it up to the relevant brand owners to reach agreement over any brand disputes.

Once a trade mark registration has been completed, it can be difficult to overturn.  Registrations can be challenged if they are not used, but this ground is only available after a period of five years has passed.

So far, this all sounds like bad news for rights holders!  What’s the solution?

The solution offered by IP Offices around the world is the concept of an “opposition window”.  Once a trade mark is applied for, it is formally advertised and then there is a short period during which any third parties who have objections can file a formal opposition to stop the application progressing to registration.

Oppositions are a much cheaper and quicker way to stop an overlapping trade mark registration at source, compared with waiting for the extended period of five years to prove non-use or relying on other legal grounds to revoke a mark after it has been registered.

Of course, overlapping third party trade mark applications are often made without any deceptive intent. In these cases, it is usually possible to defend your rights without needing to file a formal opposition.  Parties who are not real commercial competitors often resolve things through limitation of the good and services which are applied for, or through co-existence agreements setting out how the two different brands may operate.

Therefore, a key part of protecting your brand should be keeping a watch on the trade mark filing activity of third parties.

These services start from just £25 a month, so represent a worthwhile investment to get early warning of problems which might affect your brand.

Get in touch for more details: you can email us on scintillatrademarks[at]scintilla-ip[.]com, call us on +44 (0)141 255 0295, or chat to us via LinkedIn.