The Race for Trade Mark Rights

The fast food chain Burger King is called Hungry Jack’s in Australia. The deodorant brand LYNX is called AXE in most places outside of the UK. Apple Inc. has been fighting for the exclusive rights to use the “iPhone” brand in Brazil for over ten years. Even corporate giants can lose the race to acquire their trade mark rights first!

Some countries operate on a “first-to-use” system, where trade mark rights are granted to the person who started using the mark first, while a larger proportion of countries operate on a “first-to-file” system, where rights are granted to the person who first filed for a trade mark application.

The UK and the EU are “first-to-file” territories. An advantage of this system is that once a trade mark registration is granted, it provides a good level of security to businesses, that they can use their chosen mark with minimal risks. Examples of the benefits of trade mark registration:

• Prevent a third party from using the same or a similar trade mark, for the same or similar goods/services;
• Prevent a third party from applying for registration of the same or a similar trade mark, for the same or similar goods/services;
• Rely on the registration as a defence against infringement proceedings, which could -result in a business being forced to rebrand and pay damages;

• Prevent squatters from acquiring rights in the trade mark, and seeking a sale of such rights at an inflated price;
• Use the registration as a ground to assert rights in a domain name dispute;
• Make an Application for Action, which, once granted, will allow the Border Force to detain goods suspected of infringement, e.g. counterfeit goods.

There are circumstances in the UK and EU where the person who first used a trade mark can claim rights to it. However, providing sufficient and relevant evidence of use is often difficult, costly and time-consuming, with no guarantee of success.

It is worth mentioning that having a company name registration differs from having a trade mark registration. The former does not provide the business with the rights to use the company name as a trading name.

While there is no time limit for a business to apply for a trade mark registration, this should be done as soon as a brand name or a logo has been chosen (before time and money are spent on marketing or package design) to protect itself for the reasons discussed.