Disputes/Litigation

Trademark disputes and litigation arise in a number of ways. At the most basic level you may simply need our help to understand a letter you have received on your trademark application, or a letter from the trademark registry, and having started out handling your own trademark application, you may decide that after all you want to an expert to prosecute your trademark application through the system. Simply call us, we are there to help you.

Alternatively, the issue may relate to a passing off claim or ‘cease and desist’ letter you have received. Sometimes someone else may be using your mark in an inappropriate way, and you will want advice to decide what steps you could realistically take. In all such situations, you can depend on us to give you pragmatic advice to help you to make appropriate business decisions.

Other ways in which litigious circumstances arise in trademarks is where there is opposition to a trademark, or an action to revoke or cancel a mark. We have the expertise to assess the facts and help you decide on the most appropriate course of action for you as cost effectively as possible.

We can also help you if you have been copied, and with our international network of contacts we are well placed to help brand owners to tackle piracy and counterfeit goods.

Passing off or Infringement actions

There will be a number of ways in which passing off or infringement actions may arise in connection with your trademarks. Passing off is the terminology used whenever unregistered trademark rights are in question, whereas trademark infringement is the correct term when registered trademark rights are in issue.

Passing off/trademark infringement arises when there has been Use of your trademarks by other traders Use of your branding Use of the same or similar packaging, style or get up of your goods and services, Applications by third parties for trademarks that may harm your existing marks Domain name disputes or cybersquatting.

Oppositions

When you apply for a trademark, the proposed trademark will, once it has passed the examination stage, eventually be advertised for a 3 month period by the Registry. The purpose of advertising the mark is so that anyone who wishes to object to its registration may come forward. This is known as filing an opposition.

Opposition proceedings are usually started by the owner of a registered or unregistered trademark if they consider that the proposed trademark might be confused with theirs. However, anyone who thinks a proposed trademark should not be granted can object during the advertisement stage.

To file an opposition costs £200 in official fees. The legal fees depend on the complexity of the opposition, and in particular on the time it takes to draft a statement of grounds and deal with the opposition procedure generally. Evidence supporting the statement is generally filed later.

If you have applied for a trademark and receive an opposition, you will need to consider your options. You have 3 months in which to file a counter statement, and if you fail to do so your application will be deemed to have been withdrawn.

If a counter statement is filed then the person who filed the opposition (the opponent) must file evidence in support of the opposition, and failure to do so will be deemed to be an abandonment of the opposition. Once that is filed the trademark applicant may file evidence of in support of its trademark application. Once the filing of evidence has been completed, a hearing may be arranged, if requested by either party.

The opposition procedure may last from 4 months to over a year. Then the Registry having considered the evidence, and where a hearing has been requested, heard the arguments presented orally, then issues its decision, usually in writing.

The opposition procedure for European trademarks (CTMs) is administered in Alicante, Spain by the Office for Harmonisation in the Internal Market (OHIM) is quite similar to that of the UK Registry, although there are some differences. The official fees are 350 Euros (about £250).

In general oppositions are like court claims in that the costs of the opposition are paid by the losing party. However, where each party succeeds on some points and fails on others, a different apportionment of costs may be ordered. Costs can include not only official fees but also legal costs.

High Court (Chancery) litigation

If you wish to appeal a decision from the Trademark Registry, or are on the receiving end of an appeal there are certain steps that you will need to take and timescales to observe to lodge and progress your appeal in the High Court.

The steps involved may include:

Filing the appeal with the court, before which it is necessary to instruct Counsel to draft the Grounds of Appeal (ie. statement of case) and skeleton argument. These must then be lodged with a sealed copy of the Registrar’s Decision. A bundle of documents containing duplicate copies and evidence from the original hearing will also need to be prepared.

It may also be necessary to draft witness statements, and serve the documents on the other side

It generally takes 6 months for the matter to come before the Court once all the required documentation has been filed. After the hearing (which may require one day) the Judge hands down a written judgment.

If you want us to contact you to discuss your trademark dispute either ring us, or send an email giving basic information and your contact details, and we will then ring you.