Switch In Trade Mark Law
The owner of a trade mark in the UK is given the exclusive right to use that trade mark in relation to the goods/services for which it is registered. But the problem is that while there is a multitude of goods for which a trade mark might be registered, there is only a limited number of words in the English language which we can come up with and so different people might wish to use the same trade mark for different goods.
Ask anyone what they think “Switch” is and the most likely response you will get is a debit card. Indeed, Switch Card Services have registered “Switch” as a trade mark not only for debit cards but, as you might expect, cash dispensing machine, printers, and a wide range of related products. But while that is the use of the trade mark which you might come across most, if you are interested in certain other areas you might associate it with different suppliers. For example, Switch is also a brand name for skis; but it’s owned by a different company for furniture; another for toothbrushes; another as a nightclub; two different companies own it for clothing; and while one owns it for training courses the better known Weight Watchers owns it for their own courses. So how did all these people get to own the same trade mark for these different types of goods? Isn’t that going to leave the consumer confused?
Recognising that different suppliers might use the same trade mark for different types of goods and services, the trade mark register is divided into various classes of goods (based on an international classification) which allows owners of trade marks to register the same mark for different products. When you apply to register your trade mark, the Registrar examines it to check if there are any other similar trade marks usually for similar goods, but generally to establish whether any of the existing registrations could be confused with your own application if they allowed it to proceed. If the Registrar thinks the public might be confused, they will reject the application and you have to persuade the Registrar that there is no likelihood of confusion in order to allow your application to progress further in the application process.
This does all appear to make sense – the Registrar maintains a trade mark register and so has the role of policing trade mark applications to ensure that two confusing trade marks are not registered. But there has been a switch in the law as from 1st October this year.
From that date, instead of the Registrar maintaining the integrity of the register by refusing to allow confusing applications to progress, they will simply advise the applicant that they think there is a possibility of confusion with certain trade marks and, subsequently, write to the owners of those trade marks letting them know about the application. The onus is then on the owners of such trade marks to object (at their cost) if they wish, but the Registrar will not carry out that function for them.
So how does this change affect owners of trade marks? It has certainly always been possible to get round an objection raised by the Registrar by seeking the consent of the owner of the existing trade mark to the disputed application proceeding. But this requires a positive consent by the proprietor of the existing registered trade mark who knew that if he did nothing the Registrar’s objection still stood in place as a problem for the applicant. Under the new procedures, from 1 October the onus is now entirely on the owner of the registered trade mark to object and if they fail to do so the application will proceed.
No doubt many of the applications to register “Switch” had objections raised by the Registrar which must have resulted in some discussion between the proprietors of the various trade marks. It’s difficult to see how, otherwise, one company could own the trade mark for piping and a different company for pipeline construction. But while in the past the Registrar would have acted as a front line defence against any such competing applications, now the onus is put entirely on the proprietors of trade marks to look after their own affairs.
Owners of trade marks should be aware that this switch in the law may affect them more greatly than would at first appear.
FOR FURTHER INFORMATION PLEASE CONTACT: SCOTT KERR