Trade mark registration is intended to protect genuine brands and help businesses distinguish their goods and services. But difficulties can arise where applications or registrations are pursued primarily to obstruct others, extract payments or gain leverage over businesses already using a name. This behaviour is sometimes described as trade mark trolling. The expression is informal rather than a defined category of UK trade mark law, so the legal position depends on the particular facts, including the validity of the registration, the owner’s conduct and the rights held by each party. In this article: what trade mark trolling can mean; warning signs for businesses; how earlier searches and monitoring can reduce risk; and what to consider if you receive a demand based on an earlier trade mark.

What is trade mark trolling?

The term is commonly used for aggressive trade mark activity where a person or business seeks to use registrations as leverage rather than simply protecting a genuine trading identity. That can take different forms. For example, a party may acquire or apply for marks connected with names already being used by others, assert unusually broad rights, or demand payment from businesses whose use may not actually amount to infringement. Importantly, an aggressive demand does not by itself establish that the trade mark owner is acting unlawfully. Equally, the existence of a registration does not mean every use of the same or a similar word infringes it.

Why can it be a problem for businesses?

A trade mark dispute can create commercial pressure even before the legal merits have been properly assessed. A business may face demands to stop using its name, withdraw products, transfer a domain name or pay compensation or licence fees. For smaller businesses in particular, the cost and disruption of responding can create pressure to settle quickly. That makes it important not to assume that a strongly worded allegation necessarily reflects the strength of the underlying legal position. Where a demand alleges infringement, the scope and validity of the earlier registration, the similarity of the marks, the relevant goods and services, and the way each mark is actually used should all be considered. Our Trade Mark Infringement Advice service can help assess those issues.

Search before adopting a new brand

One of the best ways to reduce avoidable disputes is to investigate earlier rights before committing to a new brand. A professional Trade Mark Search can identify potentially relevant earlier applications and registrations and help assess whether they present a meaningful obstacle. A search is particularly valuable before investing significantly in packaging, websites, signage, advertising or a product launch. Discovering a conflict after those costs have been incurred can make the commercial consequences much greater.

Register important brands early

Where a business has selected a distinctive brand and cleared it for use, early registration can strengthen its position and make it easier to establish the scope and date of its rights. Registration should still be approached carefully. The specification of goods and services needs to reflect the business’s legitimate commercial requirements, and filing unnecessarily broad applications can create problems of its own. Our Trade Mark Registration service can assist with clearance, filing strategy and the preparation of an appropriate specification.

Monitor applications that may affect your brand

Registration is not the end of brand protection. Businesses should remain alert to later applications for identical or confusingly similar marks. Identifying a potentially problematic application during the publication period may provide an opportunity to challenge it before registration. Where appropriate, advice on Trade Mark Opposition can help determine whether an objection is justified and how it should be pursued.

What if you receive a demand?

Do not assume that you must immediately rebrand or pay simply because the sender owns a registered trade mark. The first step is usually to establish exactly what rights are being asserted and whether they cover the relevant mark, territory, goods or services. It may also be necessary to consider the registration’s validity, its use, your own earlier rights and the way the competing signs are encountered by customers. At the same time, a demand from a genuine earlier rights holder should not be ignored. Missing deadlines or continuing potentially infringing conduct without advice can make a dispute more difficult to resolve.

Final thoughts

Trade mark trolling is not a separate legal cause of action, and each dispute needs to be assessed on its own facts. The existence of a registration is important, but so are its scope, validity, use and the rights of the business receiving the claim. If you are concerned about an aggressive trade mark claim, or want to reduce the risk of conflicts before adopting a new brand, contact Corpinal IP to discuss your position.