Errors with trade marks - can they be fixed?

It is not uncommon for trade mark holders to discover that their trade marks have been incorrectly registered and need to be amended. We explain below how these issues can be addressed and, where possible, resolved.

Filing a trade mark through the Intellectual Property Office’s website may appear straightforward. However, failing to appreciate the legal requirements can result in an invalid registration or one that provides insufficient protection for the holder’s commercial interests.

The difficulty is that a problem with a trade mark registration may only become apparent when a dispute arises or the business is being sold. By then, it may be too late to correct the error.

Trade mark errors - how to fix

Where a registered trade mark contains an error, some mistakes can be corrected while others cannot. Legal procedures may be available to address errors in a registration, depending on their nature. The applicable procedure and any time limits will depend on the type of correction sought.

If a trade mark has been incorrectly registered:

• Certain errors in the specification of goods or services may be corrected, subject to the applicable legal requirements.
• The applicant’s or proprietor’s name or address may be corrected where there has been a genuine error in recording the details.
• The appearance of a registered trade mark cannot generally be changed through the correction procedure.
• New categories of goods or services cannot be added if doing so would extend the protection beyond the existing registration.

Examples of the process to amend a registered trade mark

Our client, 20/20 Limited, trading as Coffee House, applied to register a UK trade mark covering retail services in the food industry.

After trading for 20 years, the client decided to sell the business. During the sale process, it became apparent that the trade mark had been registered in the name of the trading name, Coffee House, rather than the correct legal entity.

The ownership error threatened the value of the business by creating difficulties in establishing the connection between the registered trade mark and the business’s goodwill. We took urgent action and applied to the trade mark registry to correct the registered proprietor’s details on the basis of a genuine error.

How did we prove error?

To demonstrate that a genuine error had occurred, we prepared documentary evidence, including a witness statement, showing that:

• The original trade mark application had been made without legal assistance.
• The business had always traded as Coffee House.
• There was no separate legal entity trading as Coffee House.

Successful outcome

The registrar was satisfied that the evidence established the genuine error and that the proposed correction would not adversely affect ownership rights. The witness statement and supporting research helped demonstrate why the registration needed to be corrected.

Best advice – how to avoid wrongly registered trade marks

The best approach is to ensure that a trade mark is registered correctly from the outset, avoiding potentially costly complications later. In some cases, this may involve obtaining several registrations to protect different aspects of the brand. Design right registrations may also provide additional protection where appropriate.

Trade mark registration should follow a proper investigation into ownership, the proposed goods and services, and the protection required. Keeping records of the process can also help resolve questions that arise later.