Invalidation, opposition and infringement: a basic guide to defending your registered trademark

Invalidation 

Invalidation has the effect of striking out a registered trademark in its entirety or in respect of its use for specific goods or services. 
You might apply to the UK Intellectual Property Office to invalidate a registered trademark, which can be done on either absolute or relative grounds. Absolute grounds can be brought by an earlier trademark holder or third parties. These include that the trademark is generic for the sector of goods or services in which it is used, or that the trademark is non-distinctive and so should be free for all to use in that trade industry. Relative grounds can be applied for only by the owner of an earlier trademark or right, which the applicant’s trademark would conflict with if registered. You may therefore wish to apply to invalidate a trademark which is identical to your own, or bears so much similarity that the public may confuse the two. 

Opposition

Invalidation occurs at the point where the trademark is already registered. If the trademark is published in the online trademarks journal but has not yet been registered, then you may instead choose to oppose its registration. This means that you prevent a published trademark from becoming registered on either absolute or relative grounds, as described above. 

Infringement

Trademark infringement is where someone has used your trademark without permission or used a similar trademark which may undermine your own. 

According to the developing case law and under section 10 of the Trade Mark Act 1994, you can bring trademark infringement proceedings before the court in the following three scenarios:

1. Where a registered trademark is identical to your registered trademark and it is used in relation to identical goods and services,
2. Where a registered trademark is identical or similar to your own trademark, and so there exists a likelihood of confusion on the part of the public, or
3. Where a registered trademark is identical or similar to your own trademark, the latter having a reputation in the UK such that the use of the trademark takes unfair advantage or is detrimental to the distinctive character of your trademark.

Claims in relation to trademark infringement must be brought within a six-year limitation period from the date of infringement. Once a claim is brought, if successful, the Court may order the award of damages or injunct the defendant which prevents them from continuing the infringement.

Defending your registered trademark

A vital first step in defending your registered trademark is seeking legal advice. Our Litigation team will be able to provide advice on the merits of your position and advise on next steps in settling or bringing a claim.  
Often, taking steps to defend your trademark can be done without progressing to court. This might include the following:

• Mediation,
• Co-existence agreements, which allow both parties to use similar trademarks without the threat of litigation, or
• Licensing agreements, where you allow another to pay to use your intellectual property with certain restrictions.

Our solicitors can advise you on the above processes and identify the best way for you to protect your brand identity and enforce your rights. Just call us on 01926 491181 or email: disputes@moore-tibbits.co.uk.