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Should The UK Be More Like The USA?

Should The UK Be More Like The USA?

Some people were concerned to learn from my article An Expensive Lesson in Trademark Law that trademark registrations can be cancelled. It made for a sense of insecurity because what if their own registrations rest on shaky foundations?

A system that tolerates EXACTLY the same trademark being registered for IDENTICAL goods and services seriously disadvantages small businesses who may not be able to afford to oppose conflicting applications. 

The UK had a different approach before it joined the EU. Its registration system was similar to that of the USA and other common law countries. The registry itself prevented conflicting registrations.

The USPTO doesn’t allow trademarks to be registered if someone has rights in the name applied for.

If the trademark office believes two marks can’t co-exist, the consent of existing trademark owners is needed in most common law countries.

Once you apply to register a trademark, an Examiner searches the registers to see if the mark applied for conflicts with existing registrations. If similar marks are found, the Examiner flags it up.

They will refuse the application in the USA. The applicant must then argue their case and try to persuade the Examiner to change their mind.

The UK IPO does not prevent similar trademarks being registered. The Examiner simply notifies the existing trademark owners about the application. The onus is placed on the existing trademark holder to decide whether to object to an application.

Few applicants simply withdraw their application and abandon use of their brand if an existing trademark owner objects to their application. 

So, in practice, it takes financial resources to stop other applicants registering similar marks. You need to oppose an application and spend time and money to stop an application getting through to registration. And there’s no certainty that you’ll win in many cases.

Existing trademark owners who don’t oppose applications can later apply to cancel a registration. However, it's cheaper to stop a registration getting onto the registers than to cancel it later.

Many businesses are doing their own trademark registration, encouraged to do so by the Intellectual Property Office. They often apply without doing adequate due diligence checks. But does their success give them the solid rights they need?

In practice, many registrations are vulnerable to cancellation. As such, the UK trademark system is unreliable.

Given the number of people starting their own businesses and registering their own marks, it's not a desirable state of affairs. I’d like to see the UK change its approach now that we’ve left the EU.

We need more certainty around trademarks. If the UK system changed back to what it used to be, third parties would be prevented from registering similar marks. A trademark registration would then give owners the exclusive rights that they need and which they legitimately expect from their registration.

I’d love to know your thoughts on this.