Trademark Advice
Discussion
I'd like to trademark the business name I've been using for the past 10 years here in the UK. There is a company in the Czech Republic who has a very similar name. The only difference is the other business has an additional letter. The names sound the same when spoken.
The company in the Czech Republic is a completely different type of business and there is no crossover of products sold but they have multiple classes registered against the trademark including the single class I'm applying for (the products types are different within the class). What are my chances of getting the trademark passed?
Many thanks for any advice.
The company in the Czech Republic is a completely different type of business and there is no crossover of products sold but they have multiple classes registered against the trademark including the single class I'm applying for (the products types are different within the class). What are my chances of getting the trademark passed?
Many thanks for any advice.
Last time I Trade Marked a name was 12 years ago but encountered something similar.
Our name was very similar to another company that operated in the same sector (we were called Envirocomms - they were called Environcomms) We developed environmental communication campaigns for the public sector, principally related to waste and recycling. They collected and processed electrical waste. IIRC, our Trade Mark solicitor felt that whilst there was sufficient difference to warrant the TM being applied, recommended that the other company be approached (they had the right of veto as they had been in business longer) to see if they had any objection. This would avoid costly legal intervention should they spot the TM latter and contest it. This we did and all parties concluded there to be no conflict (we even got a little business from the contact!).
Keep in mind that a Trade Mark is only of any use if you are prepared to enforce or defend it. From what you've described it's possible that you could get approval and the Czech company never know. But if they do and get legal, you would then have to invest time and money to defend or deal with the consequences.
Our name was very similar to another company that operated in the same sector (we were called Envirocomms - they were called Environcomms) We developed environmental communication campaigns for the public sector, principally related to waste and recycling. They collected and processed electrical waste. IIRC, our Trade Mark solicitor felt that whilst there was sufficient difference to warrant the TM being applied, recommended that the other company be approached (they had the right of veto as they had been in business longer) to see if they had any objection. This would avoid costly legal intervention should they spot the TM latter and contest it. This we did and all parties concluded there to be no conflict (we even got a little business from the contact!).
Keep in mind that a Trade Mark is only of any use if you are prepared to enforce or defend it. From what you've described it's possible that you could get approval and the Czech company never know. But if they do and get legal, you would then have to invest time and money to defend or deal with the consequences.
If you apply, the UKIPO would write to the holders of any similar registrations to your application, alerting them to the opposition period for opposing your application.
If they oppose your application, an amicable settlement might be a coexistence agreement, and possibly amendments to your application.
If their mark is more than 5 years old and hasn’t been used in the UK for the classes of interest to you, you may have the option of threatening revocation if no amicable agreement can be reached, to clear your path. That’s your ‘stick’ to hit back with.
If they oppose your application, an amicable settlement might be a coexistence agreement, and possibly amendments to your application.
If their mark is more than 5 years old and hasn’t been used in the UK for the classes of interest to you, you may have the option of threatening revocation if no amicable agreement can be reached, to clear your path. That’s your ‘stick’ to hit back with.
Edited by Grrbang on Tuesday 19th December 21:22
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