Smart Brands Police Their Own Marks
A trade mark (“TM”) is the single most important Intellectual Property asset of a business. So, it needs to be well looked after.
When you apply to register a UK TM the application is examined for registrability by the UKIPO Examiner. Among other things the Examiner conducts a search and notifies applicants of the details of any similar earlier TM registrations.
These warning notifications or “citations” as they’re known, are designed to enable existing TM owners to avoid dilution of their registered TM rights. Awareness of a TM application that’s similar to their registration enables TM owners to decide whether they want to oppose it.
Where the examiner cites TMs with earlier rights TM applicants may either amend their application or withdraw it completely to avoid legal proceedings. If the TM applicant decides to pursue registration regardless of any citations, the owners of the cited TMs will be notified by the Examiner. This might prompt an opposition against the application.
It’s worth noting that the UK approach to TM registration is different to that of the US. In the USA, the Examiner’s searches aim to prevent a TM application being registered if earlier rights citations can’t be overcome.
On the other hand, the UK Examiner’s objective is not to prevent TM applications being registered. It’s simply to notify TM owners of similar applications. The UKIPO leaves it to the TM owners themselves to decide whether to oppose an application. If they fail to do so, the TM application will proceed to registration even if it’s exactly the same as an existing TM registration.
So, the UK Examiner is neutral in the process and simply alerts TM owners of any similar TM registrations they find. It’s then up to TM owners to go through the process of opposing an application.
If an existing registration isn’t cited in the examination report, it does not mean the owner of the existing TM has a weak case.
Indeed, the UKIPO’s published figures indicate that the UK Examiner’s searches are far from comprehensive because there has been a marked decrease in the number of notifications in recent years. For example, in 2023 only 28,026 (17%) of applications received a citation of a conflicting mark. This is the lowest figure in the period 2019 – 2023.
By contrast, in 2019 around 28% of filings received a citation Given the record number of filings in 2023 compared to 2019, this reduction in citations is surprising. It points to the need for brand owners to be vigilant about monitoring new applications rather than relying on the examination process to notify them of conflicting TM applications.
The trend of fewer applications receiving citations makes it more important than ever for TM owners to protect their brand.
I recommend putting in place a TM watch service to reduce the risk that a third party’s TM application proceeds to registration without your being aware of it.
If you want to better police your most important asset, consider taking up our brand protection service to access the legal advice you need to manage your TMs. You may add a watch service as part of that service to ensure you have the basic systems in place to prevent conflicting TM applications from reaching registration if they dilute your mark.
