Some basic steps to minimise the risk of challenge when registering a trade mark
One of the trickiest things for a trade mark application is trying to avoid a refusal or challenge. There are some simple steps that you can take to avoid a trade mark being challenged under absolute/relative grounds for refusal.
1) Choose a distinctive trade mark. This simply means something that makes it different and makes it something a customer would recognise as you. For example, a simple design of ‘fit quick’, for a company who specialise in gym equipment have a chance of not being distinctive enough. Lets say we add something to make it distinctive, perhaps we change ‘fit quick’ into a logo rather than the wording alone, this may suffice.
2) Avoid making the trade mark descriptive of your services. So for example ’fit quick’ would likely be seen as descriptive for gym equipment. However, if this name was changed from ‘fit quick’, to ‘fit first’ (in logo format). This would be less likely to cause issues with being a descriptive term.
3) Make sure the trade mark that you have chosen is not similar to another competitor. To do this, simply go on to the Intellectual Property Office website (https://www.gov.uk/government/organisations/intellectual-property-office), and search for the trade mark by name. In this case, a search for ‘fit first’ for example.
4) The best solution from here would be to avoid an identical trade mark (if there is one) and even perhaps avoid a similar trade mark depending on the line of business. For example, if ‘Fit First’ is taken by a company who manufacture sportswear, it would be wise to avoid this trade mark.
Overall, the biggest defining factor will be whether there is a possibility of confusion between the two identical/ similar trade marks. Ask the question, will a customer confuse these two trade marks for the same goods or services? If there is a possibility of yes, going back to step one would be the safest option.
Although this is not an exhaustive list, these are some good points to keep in mind when going through a trade mark process.
For a further help on trade mark applications, please contact the Trademarkroom team.
By George Bower, Undergraduate LLB Law student at Southampton Solent University