Opposing a Trademark

[D1ckie]

Hi

Anyone know of a quick way to oppose a registered trademark, that is a descriptive word?

Basically someone has registered a colour an this is becoming an issue for us and our customers as the trademark holder is upholding their TM through eBay's VERO programme

Cheers

[Europa1]

D1ckie said:

Hi

Anyone know of a quick way to oppose a registered trademark, that is a descriptive word?

Basically someone has registered a colour an this is becoming an issue for us and our customers as the trademark holder is upholding their TM through eBay's VERO programme

Cheers

I suspect it depends on where the mark is registered.

[D1ckie]

Its a UK trademark

[tribalsurfer]

D1ckie said:

Hi

Anyone know of a quick way to oppose a registered trademark, that is a descriptive word?

Basically someone has registered a colour an this is becoming an issue for us and our customers as the trademark holder is upholding their TM through eBay's VERO programme

Cheers

I wasn't sure you could oppose an already registered trademark. There's usually a consultation period where they publish in a journal prior to initial registration where you can raise an objection. They also contact existing trademark holders of similar ilk to make them aware and allow them to object.

[D1ckie]

tribalsurfer said:

I wasn't sure you could oppose an already registered trademark. There's usually a consultation period where they publish in a journal prior to initial registration where you can raise an objection. They also contact existing trademark holders of similar ilk to make them aware and allow them to object.

Agree, but consider the trademark registered is similar to registering the word Black, can this be opposed?

[akirk]

step 1 - gather evidence to show that the trademark is not a specific mark of their trade - but a general descriptive term
step 2 - talk to a IPO attorney (big company like Marks & Clerk would do this) - get their advice...
step 3 - take advice from step 2

the IPO are usually quite hot on not allowing generally descriptive terms from being trademarked - so also check the actual registration on their website and what it actually applies to (e.g. is it a trademark for a graphic version of the word / for a small subset of a class / etc.) and then see whether that is fair / preventing you from trading / etc.

[Europa1]

tribalsurfer said:

I wasn't sure you could oppose an already registered trademark. There's usually a consultation period where they publish in a journal prior to initial registration where you can raise an objection. They also contact existing trademark holders of similar ilk to make them aware and allow them to object.

Opposing an already-registered mark is difficult, to say the least. Bad faith on the part of the registrant is a ground for objection, but I'm not sure of any others.

[akirk]

Europa1 said:

tribalsurfer said:

I wasn't sure you could oppose an already registered trademark. There's usually a consultation period where they publish in a journal prior to initial registration where you can raise an objection. They also contact existing trademark holders of similar ilk to make them aware and allow them to object.

Opposing an already-registered mark is difficult, to say the least. Bad faith on the part of the registrant is a ground for objection, but I'm not sure of any others.

showing that you were already using the trademark can help

[anonymous-user]

Is it a trademark causing problems or eBay's vero programme

The latter can be a much blunter tool and the people at eBay operating it don't always understand the soundness of the basis on which they act

[dartissimus]

Possibly your product is not competing in the same field and only shares the same word.

See what categories is it registered in ? surely they haven't registered a descriptive word in every category, the cost would be prohibitive.

Your problem is more likely to be proving this to the Ebay rule upholders who aren't noted for either common sense or intelligence.,

[Buffalo]

I would try calling the IPO office for advice and find out if it is actually a genuine TM as I'm quite surprised to hear that the word black is registered. I recently registered my own company and the initial application was refused because my company name (made up of three words) was considered descriptive. Unless I could provide specific company presence the advice was to only register the symbol part of the logo, and not include the words.

FWIW, anyone can put TM against their logo but it is only registered if it has a circled R.