I had been using two words as part of my brand and collaborating with a recruitment agency on some joint projects, some of which included my brand name, but had not registered the words as a trademark. Unbeknown to me at the time, the recruitment agency trademarked those two words a year ago. Can I do anything?
According to section 47 of the Trademark Act, it is possible to apply to have a trademark declared to be invalid on the ground that: “there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied.”
Section 5(4) states that a trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented by virtue of an earlier right, in particular by virtue of the law of copyright or the law relating to industrial property rights.
Such earlier rights include an unregistered trademark and the right to sue for passing off. To be entitled to unregistered trademark rights and establish a passing off claim, you would typically need to prove three elements:
Goodwill or Reputation: You must demonstrate that your goods or services have acquired goodwill or reputation in the market under the mark. Goodwill is a business's attractive force that brings in custom. This will usually be shown by proving consistent use of the mark in connection with the goods or services, as well as recognition of the mark among a significant portion of the public.
Misrepresentation: You must show that the defendant has made a false representation to the public, leading or likely to lead the public to believe that the goods or services offered by the defendant are your goods or services. This typically involves use of a mark that is the same as or similar to your mark.
Damage: You must show that they have suffered or are likely to suffer damage as a result of the defendant's misrepresentation. This could be direct damage, such as loss of sales, or more indirect harm, such as damage to reputation.
It's important to note that passing off is generally more difficult to establish than infringement of a registered trademark, since it requires proof of goodwill or reputation, misrepresentation, and damage..
If you believe you have a strong case, you should act as soon as possible because you may lose the right to file an invalidation action if you are found to have acquiesced in the use of a registered trademark for a continuous five-year period, unless the later trademark was registered in bad faith.
In order to bring the invalidation action, you would need to complete Form TM261 and complete Section C: “The application for invalidation is based on Section 5(4)(a) of the Trade Marks Act, where the use of the registered owner or holder’s trade mark would be contrary to law, in particular, the law of passing off.” There is a fee payable of £200.
I would always recommend hiring a trademark lawyer when considering commencing such an action.
© Suzanne Dibble 2013-2023
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