Advice and consultancy Conflicts and oppositions, an everyday occurence
Conflicts
Trade mark conflicts are unfortunately an everyday occurrence. You may find during the application procedure that someone else claims to have rights to your trade mark. Even when you have registered your trade mark, someone else may file an application for or use a trade mark that is very similar to yours. Your business may have grown so quickly that your trade mark is not yet protected in the countries where you operate and someone else claims to have trade mark rights there. In all these and similar cases, Novagraaf's experienced attorneys will be happy to assist you with advice on the action to be taken.
We are qualified to deal with cases in the United Kingdom and the European Union but if a problem arises in a country outside these territories, we seek specialist advice from the relevant attorney in our worldwide network of associate firms.
Trade Mark Oppositions
In most countries there is an opposition procedure that enables you to argue against the registration of a trade mark that resembles yours if there is a likelihood of confusion between the two marks. You must give notice that you intend to oppose the conflicting mark within a specified period. If you subscribe to Novagraaf's watching service, you will be notified of the dates of the opposition periods in good time. Opposition procedures are often easy to initiate and are also a lot less expensive than court proceedings. Novagraaf attorneys are experts in these procedures and will look after your interests.
Objecting to a design
Unfortunately, there is no opposition procedure for design registrations, but for designs registered in the United Kingdom, you can apply to cancel or invalidate the design after registration. Similarly, a request may be made to OHIM to invalidate a European Community Registered Design.
In many countries, however, the only way to object to registration of a design is through the courts. Using our network of local associates, we can assist you with any such objections.
Objecting to a domain name
For domain name conflicts there are special arbitration procedures, for example the Uniform Domain Name Dispute Resolution Policy (UDRP) for gTLDs extensions such as .com, .info, .org, etc. and Alternative Dispute Resolution (ADR) for .eu or .co.uk disputes. Novagraaf will be pleased to assist you in these procedures.
Objecting to a company name registration
Since October 2008, it has been possible to object to the registration of a company name in the United Kingdom using the Company Names Tribunal. It is possible to object to a company name registration on the basis that the company name is opportunistic and with a view to obtaining money from the complainant, or to prevent the complainant from registering the name. A complainant may be someone who has goodwill or a reputation associated with a name or trade mark and where that name (or a similar name is likely to suggest a connection with the complainant) has been opportunistically registered as a company name by someone else. The Tribunal decided its first case in December 2008, upholding an objection to the company name Coke Cola Limited following an objection from the owner of a rather well known drinks Trade Mark.
An objection to a company name where the objection is based solely on the fact that the name is too close to an existing company name must be made to Companies House.
If you would like to know more about conflicts and oppositions and the role that Novagraaf can play for you in them, please contact us using the contact form below or by telephone on +44 (0)20 7608 3098.
