Trademark Infringement

Before registering a trademark, it is important to ensure that the trademark you intend to apply for does not infringe any existing trademarks on the Trademarks Register. Your first consideration should therefore be to search the Trademarks Register online. You can check for any existing trademarks which are the same or substantially similar to the trademark you intend to apply to register.

However, should the above search produce no results for similar trademarks, this does not guarantee that no infringement issues will arise following an application to register the trademark. Investigations must also be undertaken into what is called ‘passing off’. This is where a company or an individual trades using a name which they have not registered, but has built a business and a reputation using that name. As such, if you were to register a trademark which is the same or similar to that trading name, consumers may be misled into believing that you and your business are associated with that individual or trader. This is known as ‘passing off’. This could result in a claim against you for using someone else’s trading name, even if that trading name is not registered.

Instructing Aticus Law to Register a Trademark

If you were to instruct us to register a trademark on your behalf, we would undertake the necessary investigations to ensure that there are no issues with trademark infringement or passing off in relation to your proposed trademark. Following this, we would advise you as to whether proceeding with registering the trademark would cause any infringement issues.

Once an application has been made, there will be a 2 month period during which the Trademarks Registry will undertake a detailed examination into whether the application is legally suitable for Trademark registration. The following 2 month period is referred to as the “Publication Stage”. During this time the Intellectual Property Office (IPO) will publish the trademark you have applied for in the Trade Mark Journal and invite any opposition or challenge to the trademark being registered. This stage should not present any issues if the relevant enquires have been undertaken into potential infringements and passing off issues. However, if the IPO were to notify us of any opposition or challenge then we would be able to advise and guide you through the process of dealing with such challenges.

Upon expiration of the Publication Stage, if no opposition or challenge has been raised to the proposed trademark, then the trademark will automatically be registered.

If you require assistance registering a trademark, or you believe that someone may be infringing a trademark which you have already registered, please get in touch with our commercial team.