Editor, Solicitors Journal

Companies increase IPO 'counter strikes' to block rival trade marks

7 Dec 2015News

Savvy businesses look to protect brand investment and avoid courts with IP strategies

Attempts by businesses to block rivals registering conflicting trade marks have increased by 17 per cent, according to the results of a new survey.

Research from City firm RPC found that the number of blocked registrations have risen to 2,070 from 1,775 over the past 12 months.

Between 2009 and 2013 the Intellectual Property Office (IPO) received around 1,500 challenges.

The latest figures suggest that businesses are becoming more proactive in their brand defence strategies by blocking others from registering similar marks with the IPO.

High-profile businesses such as Cadbury, Ralph Lauren, and H&M have all successfully prevented competitors and others from registering similar brands by challenging their applications.

Jeremy Drew, a partner and head of the IP and technology group at RPC, said: '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.'

Of the 2,070 trade mark oppositions filed by companies over the last 12 months, 132 came via the IPO's new fast track opposition system, up from 41 in 2013.

The fast track system was introduced in 2013 to provide SMEs with a more cost effective and efficient way of objecting to potentially conflicting marks filed by competitors.

Ben Mark, legal director of trade marks at RPC, observed that the IPO had made a concerted effort to create greater awareness of what SMEs should be doing to protect their IP 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,' he said.