Frequently asked questions
We are here to help protect your brand. Please reach out should you have any further questions.
- This principle means that the right to a trademark is granted to the first person who registers it, rather than the first person who uses it. This principle applies to UK and EU trademarks, but not US trademarks. The same applies to UK patents.
- It gives you the exclusive right to use the trademark for the selected classes. It also gives you the right to sue for trademark infringement.
- In short, no. You must be the registered owner to be able to sue for trademark infringement.
- A trademark can be invalidated if it is shown that it does not qualify as something that should have been trademarked, for example if it is for a common word like ice cream. A trademark can also be invalidated if (a) it conflicts with earlier rights, (b) was registered in bad faith or (c) was not ‘used’.
- An earlier right refers to a pre-existing, registered UK trademark or international trademark protected in the UK.
In the case of Lindt, it was found that “bad faith is seen as a subjective state—an intention incompatible with accepted standards of honest or ethical conduct—which is ascertainable from objective evidence, and which must be assessed case by case… Bad faith requires at least, knowledge of the circumstances from which incompatibility with accepted standards of honest or ethical conduct may be deduced.” (LexisNexis).
Bad faith is very difficult to establish (rightfully so) and is usually relevant for competitors who use the other business’ trademarks against them in an anti-competitive manner.
First To Register was founded to combat the undemocratic, negligent and unethical practice of not registering trademarks with the UK IPO. We reach out to businesses with unregistered trademarks, via both email, post and phone, and inform them of their need to register the trademarks. We offer our trademark registration services, but also inform the businesses of the ability to find alternatives and to do it themselves. We wait for six weeks for a response before taking action which we honestly believe to be in the public interest. Read about our mission here.
- ‘Use’ usually refers to the actual commercial utilisation of the trademark in the course of trade. This includes affixing the mark to goods or packaging, using it in advertising, and selling or importing goods under the mark. Although, in the case of One In A Million Ltd, it was found that dealing with the trade names amounted to sufficient ‘use’.
- You can apply to invalidate a trademark if it has not been put to use in the marketplace within a continuous period of five years after registration and there are no proper reasons for non-use.
- In short, a trademark infringement occurs when a person uses another person’s registered trademark without that person’s authorisation.
- The remedies can include an injunction to stop the infringement, damages or an account of profits, destruction or forfeiture of infringing goods, and a declaration of infringement. Trademark infringement proceedings can be brought against companies who used the trademark before it was registered by a third party, under the ‘first to register’ principle.
- In short, no. You may be able to claim for passing off.
- This is a common law tort used to enforce unregistered trademark rights. Passing off occurs when one party misrepresents their goods or services as being those of another, causing harm to the goodwill of the actual owner.
- This involves making unjustified threats of legal action for trademark infringement. It can include threats to sue for infringement in cases where no infringement has occurred or where the alleged infringer has a valid defence.
- Unjustified threat provisions do not apply if the threat is made against an infringer where infringement has actually occurred (primary act). Using a trademark in the course of business (when providing goods or services) is recognised as a primary act, hence eliminating the ability to sue for unjustified threats.
- Intellectual Property Enterprise Court (IPEC): In the IPEC, costs can range from £5,000 for smaller claims to £150,000 for more complex disputes. The typical cost of bringing a claim in the IPEC is between £50,000 and £200,000, and in some instances, it can be higher depending on the complexity of the case. High Court: For cases heard in the High Court, the expenses can be substantially higher. It is not uncommon for costs in the High Court to exceed £500,000.
- The costs orders (the amount the losing party must pay to the winning side) are capped at £50,000. To recover damages, you will need to prove a loss of profits.