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The general advice has always been sound – “Apply for trade mark protection if your brand is important to your business”.
Trade Mark Attorneys, Lawyers including Solicitors and legal practitioners alike seem to have repeated this mantra often, and rightly so.
Trade marks are territorial rights and a UK trade mark will neither protect the same mark in the US nor in Germany. Some businesses tend to forget to revisit their trade mark requirement when they expand from their home market to overseas markets, with devastating consequences.
Recently, there has been an increase in cases where a brand owner who is based in the UK is alerted to the fact that their mark has been copied in totality, and that a trade mark application has been filed for identical goods / services, in another jurisdiction, sometimes in a different language. While in the past such cases were mainly prevalent in the Far East, in countries like China, recently brand owners across western and central Europe are finding their trade marks being registered, for identical goods, in countries as near as Turkey.
This kind of scenario presents a brand owner with a number of difficulties. Firstly, few other countries have common-law rights (as is the case in the UK) and established avenues for redress on which they can rely on for a passing-off action. Secondly, even if the option of commencing a passing-off action is available, if the goods in question have not been sold in great quantities in the jurisdiction where a copycat is attempting to register an identical trade mark, it may be difficult to convince the courts in that jurisdiction that the UK brand in question has significant goodwill amongst the relevant public who have bought goods bearing the trade mark in that jurisdiction.
Further, copycats often target popular brands for popular and/or upcoming products, so it is possible that by going as far as trying to register someone else’s brand in one market, they have seen an opportunity which they would like to exploit. This also necessitates the urgency to protect the brand in the key markets because it is likely that there will be other copycats, elsewhere, possibly even in the home and other main markets in which the goods carrying the brand are being traded.
If there is a legal route to oppose an application made in bad faith, it’s important to act quickly. A brand owner may find it useful to file a trade mark application, in the jurisdiction in question, side by side with the opposition procedure, before the copycat’s mark is registered. Should the opposition succeed and the copycat’s mark refused, then the only standing application will be the brand owner’s new application.
Successful opposition proceedings may involve providing evidence to show that products carrying the brand are sold extensively including through online portals which are accessible in the jurisdiction/country of the dispute. If it can be shown that the product has been sold in the jurisdiction/country the copycat has made an application, such evidence would be persuasive if provided to the court / relevant Trade Mark Office as part of the opposition procedure.
In any case, remedial action and allocation of resources are better served in protecting a brand owner’s trade marks at the outset rather than repairing any damage, since corrective measures are often expensive and fraught with difficulties. In the end, they may not adequately protect the brand owner’s trade marks, and a brand owner may find themselves co-existing with a brand that in all appearances feeds on the original trade mark’s popularity, goodwill and/or reputation. In other words, lacking a strategy for protecting your brands from the very start can significantly impact not only short-term gains, but also the long term prospects of success for a brand owners company.
A good trade mark protection strategy should consider both a brand owner’s current markets, but also outline contemplated IP expansion routes into future markets, as and when they become important. Simply put: if you begin to sell goods to a particular country, you must pursue trade mark protection in that country. Doing so will enable you to reap significant value from the IP protection created, as well as shield your company from potential third-party infringement (and the associated headaches such disputes often come with) in the future.