It is well known that carrying out trade mark searching before filing for or trading under a mark is useful for identifying relevant third party rights. The failure to identify relevant marks before launch, could lead to having to change a mark completely because of a conflict with an uncooperative party.

There have been two significant changes to the trade mark landscape in the UK that mean that it is even more important to carry out these searches, particularly for parties seeking registered trade mark rights in the UK:

Reason 1 – Post-Brexit trade mark clones leading to an increase in UKIPO notifications

At the end of the transition to the UK’s exit from the European Union (EU) on 1 January 2021, trade marks on the EU register (and EU designations of International registrations (IRs)) no longer covered the UK. To compensate for this, the UK agreed to provide the owners of EU trade marks (and EU designation of IRs) with an equivalent UK trade mark, commonly known as a “Brexit clone”. Whilst this did not actually increase the number of registered rights that cover the UK, it did significantly increase the number of publication notifications sent out by the UK Intellectual Property Office (UKIPO).

A publication notification is sent out by the UKIPO whenever a trade mark application  that is similar to (in the eyes of the UKIPO) an earlier UK mark is published. The purpose of the notice is to inform the owner of the earlier mark of the new application and the possibility of opposing registration. The owner of the earlier mark can then choose whether to file an opposition against the new trade mark application.

Before Brexit the UKIPO would only notify the owners of earlier UK trade marks and not owners of earlier EU trade marks or IRs designating the EU. Once the Brexit clones were created, the UKIPO opted to notify the owners thereof, as well as the owners of trade marks originally filed at the UKIPO. This means that more owners of earlier potentially relevant rights are becoming aware of new application filings, resulting in an increased likelihood of new applications being opposed.

The UKIPO has seen a significant increase in the number of trade mark filings after Brexit, with applicants looking to protect their rights in the UK as well as the rest of the EU. This continued increase in marks going onto the UK register suggests that the increase in publication notifications and resulting oppositions is set to stay with us in the long-term.

Applicants for potential new marks should therefore carefully consider carrying out searches in the UK before filing applications there.

Reason 2 – Recent Court of Appeal (CoA) decision (Sky v Skykick) gives Applicants the green light to draft broad applications

In July 2021, the CoA issued its decision in the long-running Sky v Skykick dispute.

One of the key questions raised in this dispute was whether an Applicant acts in bad faith when filing an application covering broad goods and services. SKY had registrations with respect to “computer software” and “data storage” in general.

At first instance, it was decided that SKY had acted in bad faith with respect to some of its broader goods. The CoA overturned the High Court’s decision and allowed for these to be reinstated. As part of this judgement, CoA determined that “[an] applicant for a trade mark does not have to formulate a commercial strategy for using the mark in relation to every species of goods or services falling within a general description. Such an applicant is entitled to say, ‘I am using the mark for specific goods falling within description X. I have no idea precisely where my business in goods of that description will develop in the next five years, but there will undoubtedly be more such goods than there are now.’”.

This CoA decision has been welcomed by the owners of trade marks with broadly defined goods and services, and has encouraged some applicants to cover broadly defined goods and services in their trade mark applications. This in turn means that there is a greater likelihood of conflict between new marks and marks already on the register.

We have found an increase in the number of UK trade mark oppositions we are handling where the respective owners of the marks clearly operate in different sectors, and in many of these cases the situation can be dealt with through simply a narrowing in the scope of the applicant’s goods and services. However, an uncooperative opponent could seek to significantly limit an applicant’s goods and services, or prevent a registration entirely, on the basis of their own broad specification.

If third party rights are identified before filing, it may sometimes be possible to avoid potential conflict by careful drafting of the specification of goods and services for any new mark, whilst still providing the cover needed by the applicant.

This update is for guidance only and should not be taken as legal advice. Should you have any questions on trade mark matters, please do not hesitate to contact us.