Someone else has registered my trade mark! What should I do?

Table of Contents

• What can you do if your trade mark has been registered?
• 1. Well-known trade mark.
• 2. Registration in bad faith.
• 3. By providing evidence of previous use
• The best thing you can do is register your trade mark as soon as possible

After months or even years of working on a business project, you’ve realised that a third party has registered your trade mark. Or, worse still, the third party has offered to sell you the registration of (your) trade mark, under the implicit threat that, should you fail to reach an agreement, they will prevent you from continuing to use it. Ideally, you’d go back in time and register your trade mark yourself, but unfortunately, that’s no longer an option.

So, is there anything we can do to avoid having to give up our brand? Read on to find out what solutions are available.

What can you do if your trade mark has been registered?

In principle, trade mark rights, unlike copyright, are not acquired through the use of the trade mark, but through its registration. Therefore, if this third party has registered your trade mark, it is presumed that they are the legitimate owner of it. However, There are ways of rebutting this presumption. Let’s see:

1. Well-known trade mark.

If your trade mark, despite not being registered, is “well known”, the third party’s trade mark registration may be invalidated, pursuant to the Articles 6.2(d) and 52 of the Trade Marks Act.

Although the law does not explicitly define it, for the purposes of this article we may say that a well-known trade mark is one that is recognised by a significant proportion of the public with an interest in the goods or services for which it is intended. However, the criterion for considering a trade mark to be well-known is very demanding, so it is highly unlikely that your brand is actually a well-known brand.

2. Registration in bad faith.

If the third party has applied for registration of the trade mark in bad faith, then its registration may be declared void, as set out in the Article 51 of the Trade Marks Act. Although there is no exhaustive list of reasons why a registration might be considered to have been made in bad faith, bad faith may be inferred when, amongst other reasons, The third party knew that we were using that brand on the market, or if the registration was made not in order to use that trade mark, but to prevent us from continuing to use it.

3. By providing evidence of previous use

Furthermore, a trade mark registration can also be invalidated if we can prove that we have used the sign for which registration is sought prior to the date of the third party’s application. In other words, we must prove that we have used this sign in the whole of the country to identify ourselves in the economic sphere, as is evident from a reading of the Articles 9.1(d) and 52 of the Trade Marks Act.

However, these last two options will involve a cost for us and, furthermore, its success will be uncertain, as this will depend to a large extent on how easily we can prove that the facts on which the action for annulment is based are in fact true.

The best thing you can do is register your trade mark as soon as possible

To avoid finding yourself in a situation like this, the best thing you can do is register your trade mark as soon as possible.

If your reputation and your brand are important to you, protect them today so you don’t have to defend them tomorrow. At Auris Legal, we can help you with the trademark registration procedure.

If you enjoyed this article, you might be interested in finding out about Trade marks and M&A: the risk of looking only at what is on record