Tuesday, May 13, 2008

Trade Mark Trolls and Trade Mark Poaching

Trade Mark Poaching – A New Trend?

Trade marks and trade names are valuable commercial assets that instantly distinguish your goods or services from your competitors. As people become more savvy in intellectual property we are seeing an increasing number of businesses attempting to unfairly acquire trade marks by using “Trade Mark Poaching”. Others are calling these operators "Trade Mark Trolls".

These unscrupulous operators want to steal or takeover your trade name/mark and piggy back on your hard earned goodwill.

This takeover usually occurs in the first few years of a business using a new trade name or unregistered trade mark, often with a web presence.

Typically the business is contacted by a third party, often via a trade enquiry requesting information.

The third party then uses this information to set up their own business with the same or very similar name and applies to register the name as a trade mark.

Once registered the third party writes to the original business with a claim of registered trade mark infringement and a request to stop using the mark.

Few people would argue that this practice is fair and, unsurprisingly, there is remedy under trade mark law. A registered trade mark can be invalidated for ‘prior early rights’ or ‘bad faith’.

Unfortunately, both of these invalidity provisions are inherently difficult and costly to prove and it is up to the trade mark/name owner to act as the “Game Keeper”. The police are unlikely to be interested unless you have proof of fraud or deception.

More useful, are the steps any business can take to lessen the risk of trade mark poaching. The best step is to register a trade mark with the UK Intellectual Property Office at the outset. The registry operates a ‘first come first served’ basis so once you have a ‘filing date’ it is far more difficult for a third party to register your name for the same goods or services.

In addition employing trade mark watching services on your trade marks or trade names allows you to identify predatory trade mark applications prior to registration. You can then object to the application during the formal 3 month opposition period.

Of course, keeping records of the development and use of the trade mark/name is good practice and a way of showing earlier rights to a name/mark.

Trade mark law is still relatively young and the boundaries are constantly changing, so there is always plenty of room for legal argument about the validity of registered trade marks.

Poachers are aware of these grey areas and the cost of challenging the validity of a registration so unfortunately Trade Mark Poaching continues to be a real problem for hard working business entrepreneurs.

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