Trademark Opposition

[pontypool]

My small Ltd company owns a trademark and we got a letter this morning from the Intellectual Property Office that a company has applied to register one which is (in part) identical to mine.

Rather than go through the formal opposition process would it be unusual to contact the applicant's solicitors (a big UK firm) and offer to not make an objection for a fee?

I am minded to make a formal objection, but a reasonable sum of money would ease the pain of not objecting and certainly help pay a few bills. But am I likely to get anywhere with such a course of action?

[LDN]

It is ok to approach the other party... but anything other than something very official could be compromised...

I was registering a TM and another party with a similar mark got in touch to ask my true intentions and to see if we would not step on their toes... I didn't intend to and it was all solved amicably. But, it would always be a risk; potentially.

[nikaiyo2]

It depends, about 5 years ago we registered a TM. Maybe 6 months later one of the big manufacturers of our raw material product started using the same name but spelled with C ours was with a K. They had adverts in all the trade press, leaflets, literature etc etc etc. Their product was identical to ours, in the same market sector, using a raw material manufactured by the other co.
We are a small company the other is a multi billion £ global, our legal advice was that we had a decent case, our TM was registered 1st, the other co made it very very clear that they would bleed us dry and drag any legal proceedings out as much as humanly possible. We had a bit of a deal and got about £5k worth of product from them, in exchange for giving over our TM.
I got the impression that we only got that because we are customers of the big co, and them giving us £5k of stock is literally nothing to them, otherwise I got the impression that attempting legal resolution would be very costly.

[insurance_jon]

ph member patently is your man for this

[pontypool]

nikaiyo2 that's an interesting story as very similar position to me, in that I am small and the new registrant is a global electronics business who I would hazard a guess are slightly better financed than me.

£5k was about the amount I was thinking would keep me very happy to not put up any opposition and so I might just get in touch with the solicitors and see if there is a deal to be done.

[Audidodat]

If the large, well funded company is threatening a long, drawn out legal battle in this area of law, £5k is a very low aim in striking a deal. I'd be multiplying the settlement several times over and still expecting to appear good value against litigation.

[patently]

nikaiyo2 said:

It depends, about 5 years ago we registered a TM. Maybe 6 months later one of the big manufacturers of our raw material product started using the same name but spelled with C ours was with a K. They had adverts in all the trade press, leaflets, literature etc etc etc. Their product was identical to ours, in the same market sector, using a raw material manufactured by the other co.
We are a small company the other is a multi billion £ global, our legal advice was that we had a decent case, our TM was registered 1st, the other co made it very very clear that they would bleed us dry and drag any legal proceedings out as much as humanly possible. We had a bit of a deal and got about £5k worth of product from them, in exchange for giving over our TM.
I got the impression that we only got that because we are customers of the big co, and them giving us £5k of stock is literally nothing to them, otherwise I got the impression that attempting legal resolution would be very costly.

Sorry, a bit late to the party!

£6k could have kicked off a claim in the "Intellectual Property & Enterprise Court", basically a division of the High Court with rules & procedures designed for smaller, simpler intellectual property claims. If it was indeed an identical product, and an identical mark bar a C/K swap, and the mark was prior registered, then it's pretty well open & shut. So they were probably quite relieved to get off the hook for £5k. On the other hand, you were sensible to settle the case rather than battle onwards on principle, and if you were happy with £5k then it's smiles all round.

Going back to the OP, it's probably sorted by now, but it is quite normal (and expected) to contact the applicant ahead of the opposition deadline. Usually this is to discuss what their plans are and try to reach a co-existence - maybe they might edit the specification of goods/services in their application to avoid what you're interested in. If they don't co-operate then an opposition is relatively painless but does need a little care & attention.

Do note that that there is a strict 2-month deadline for oppositions. You can extend it once by one month with an online form ("Form TM7A") but no further.