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INC Law
INC Law, Solicitor-Advocate
Category: Law
Satisfied Customers: 15439
Experience:  LL.B, LPC, LL.M, Pg.Dip, Solicitor-Advocate. UK Practising Certificate issued by SRA., DIFC Courts Registered (Dubai)
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I was sent an opposition against my trademark application,

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Hi, I was sent an opposition against my trademark application
JA: Is the trademark federally registered?
Customer: No the opposition was received during the trial period
JA: Have you talked to a local attorney? Has anything been filed in court?
Customer: No. They filled a TM7
JA: Anything else you want the Lawyer to know before I connect you?
Customer: No

Hi,

Thank you for your query. I am a Solicitor-Advocate in the UK and will be assisting you with your question today.

What exactly would you like to know about this? What was the objection?

Customer: replied 7 days ago.
Hi. The objection states that our trademarks are similar. Also that the classes are the same. I'm concerned as our classes are both 3. However, they are predominantly hair care and mines is nail art.
Is there a way to handle this without going to court. Also do they have a strong enough case to force me to withdraw?

Hi,

would need to see the Mark as well details of the application. If there is an existing symbol or logo which is similar to the application that you have submitted or an existing registered mark, it is likely that the TMO will refuse the application.

The only way you would be able to deal with this would be to negotiate with the owner of the other mark or change your mark; or alternatively, resolve through the courts but this will be costly and lengthy.

There is also the issue of Passing Off.

Passing off is similar to trade mark infringement, but applies to protect unregistered rights associated with a particular business, its goods or services. Passing off actions can be brought in a wide range of situations, including to protect business names and features of "get-up" or "trade dress".

The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842)).

In each case of passing off, the key issue is the danger of misrepresentation as to the origin of goods or services. If someone leads consumers to believe that their goods or services are connected with another business when they are not, they may give the other business grounds to sue for passing off.

Passing off claims can be difficult to prove because claimants need to demonstrate that at least some of the public are at risk of confusion between the two businesses. Also it is not always easy to show that a misrepresentation has been made. For example, if someone advertises their fast food business as “the Rolls-Royce of chip shops” they may well be infringing Rolls-Royce’s trade marks but it is highly unlikely a court would find that they were passing themselves off as connected to Rolls-Royce in a business sense.

I hope this helps.

If you have nay further questions, please do not hesitate to ask.

many thanks,

Customer: replied 7 days ago.
Thank you. My trademark is SPICE AND GEMS. The opposing trademark is GEMZ. The only part of the class that is the same is essential oils and cosmetics. Am I able to remove those parts of my application to avoid a court case? I can show you the details.

Hi,

You can remove those parts and re-apply.

Unfortunately, although I am happy to look into this further, any further review would be charged as a Premium Service.

I hope this helps,

Kind regards,

Customer: replied 7 days ago.
Ok thank you

Its a pleasure.

Good luck!

INC Law and 4 other Law Specialists are ready to help you