17% increase in attempts by businesses to block trade mark applications by rivals

Published on 14 December 2015

Businesses have stepped up attempts to block rivals registering conflicting trade marks in the last year, with the number of attempts to block trade marks increasing by 17% to 2,070 up from 1,775 in the previous 12 months*, says City law firm RPC.

RPC explains that businesses are increasingly toughening up the defence of their brands by trying to block another business from registering a conflicting trade mark by lodging a challenge to the Intellectual Property Office.

High profile businesses such as Ralph Lauren and H&M have all recently been successful in preventing other businesses from registering similar brands by challenging their trade mark applications.

Recent examples of challenges to trade mark applications

  • H&M successfully challenging a trade mark application made by clothing manufacturer, Risma Textiles, for the trade mark “HM VII”.
  • Cadbury, the British confectionery company, unsuccessfully attempting to stop the registration of the trade mark “SwissDream”, by a leading Swiss chocolate maker, Goldkenn, because of possible confusion with Cadbury’s Dream chocolate bar.
  • Luxury clothing designer, Ralph Lauren, successfully protecting their “Polo Ralph Lauren” and “Polo” trade marks after clothing retailer GBR Polo Limited sought to register the trade marks “GBR Polo” and “Polo JohnBull”.
  • O2, the telecommunications giant, successfully blocking the registration of the trade mark “Pure O2” by Avon Products, the cosmetics company.
  • BlackRock, the world’s largest asset management business, successfully challenging a trade mark application made by Blackrock Advisors UK, a small UK-based financial advisory firm.

Jeremy Drew, Partner and Head of the IP and Technology Group at RPC, comments: “There has been an increase in businesses launching counter strikes against trade mark applications where they feel that the registration of those applications would undermine the investment in their brands".

"What this demonstrates is that businesses are becoming more savvy about using "watch" services and, by acting quickly, businesses are less likely to then have to pursue more costly Court action”.

RPC adds that businesses are increasingly using ‘watch’ services to monitor any competitors who may be seeking to register a similar trade mark, allowing a business to react quickly to any potential threat to their own branding and trade marks. 

SMEs file 132 Fast Track oppositions to trade marks filed by rivals

RPC adds that of the 2,070 trade mark oppositions filed by businesses, 132 (6% of the total) came via the Intellectual Property Office’s new Fast Track opposition system, up from 41 in 2013.

RPC explains that the Fast Track system was introduced in 2013 to provide SMEs with a more cost effective, and efficient way of objecting to potentially conflicting trade marks filed by their competitors.

Ben Mark, Legal Director - Trade Marks at RPC, comments: “The IPO have made a concerted effort to reach out to SMEs and create greater awareness of what small businesses should be doing to protect their intellectual property rights.”

“While big brands have been particularly active in defending their brands over the last few years, the message is now getting through to SMEs that ensuring their trade marks are protected is an integral part of building a credible brand.”


*Year end December 31st

**The IPO Fast-Track system began on October 1 2013

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