Wrongly filed trade marks?
It is not uncommon to find situations which leave the trade mark holder wanting to amend wrongly filed trade marks. We explain below how the problem can be tackled and resolved.
The problem with wrongly filed trade marks
Filing a trade mark looks easy enough from the Intellectual Property Office’s website. But a failure to appreciate the subtleties can invalidate the registration. A failure can also leave you with a registration which is useless in terms of offering you sufficient monopoly rights in practice.
The problem is compounded because often, you will only know about the problem of invalidation of the trade mark once an issue has arisen. By then, it may be too late to rectify.
Trade marks – damage control
For a registered trade mark, there are legal procedures in place that could help you repair the damage arising from an incorrect registration. There is no time limit to take this action meaning that it could be done anytime during the life of a registered trade mark.
Examples of what can be amended:
If the trade mark has been wrongly filed, you can amend:
- The words or terms that describe the categories of your goods and services that are incorrect or mistaken.
- The applicant’s or proprietor’s name and or address where there is genuine mistake in recording a registered proprietor.
Trade mark registration errors which are impossible to correct
- You cannot change or alter the appearance of a trade mark.
- You cannot change by adding new categories of use that will expand existing monopoly rights.
Practical examples of the process involved in amending a registered trade mark
The facts in outline
Our client 20/20 Limited trading as Coffee House made its trade mark application in the United Kingdom. This registration was to offer retail services in the food industry.
The client after trading for 20 years intended to sell his business. This is when it was realised that they had filled their trade mark under a wrong entity. The trade mark filing was incorrectly made under its trading name Coffee House.
The error with the ownership of a registered trademark risked the value of the business. This is because the error posed difficulties in establishing goodwill in the business. We took urgent action and applied to amend the trade mark at the trade mark registry based on a genuine error in registering a wrong proprietor.
How did we prove error?
To prove genuine error we prepared documentary evidence in the form of a witness statement to prove:
- initial trade mark application was made without legal assistance;
- the business had always traded as Coffee House; and
- there was no other legal entity trading as Coffee House.
The registrar was satisfied that there was sufficient evidence to prove that the registered trade mark was used by the applicant. The registrar was satisfied of the important point that the change to the trade mark registration would have no adverse effect on the ownership rights. The witness statement and the research we conducted was persuasive.
Best advice – how to avoid wrongly registered trade marks
Best advice will always be to get your trade mark registered correctly from the start to avoid problems. Sometimes, this is achieved by several trade mark registrations covering different angles. You may need to enhance the trade mark registration with design right registrations. In all cases, registration should follow an investigatory process with records supporting the steps retained.