Trademark issue letter from competition

Poshsalt

Hi,

I sell a product and registered several trademarks which all was successful in UK.

A year later I received a letter saying one of the trademarks is used by another company but there not in UK, there in Europe. They asking it to be transfered as I dont use that trademark.

I thought as we are in Brexit we are outside the EU and anything outside UK doesnt count against trademarks.

Mistral001

When was your trademrk registered?

Poshsalt

Mistral001 said:

When was your trademrk registered?

2023 is the year registered

Mistral001

I am no expert in trademarks, but the following links might help:

https://www.gov.uk/government/publications/extension-of-uk-intellectual-property-rights-abroad

https://www.gov.uk/government/publications/protecting-your-uk-intellectual-property-abroad

uknick

Poshsalt said:

Mistral001 said:

When was your trademrk registered?

2023 is the year registered

You said you registered them and then a year later you received a letter.  If you registered them in 2023, how is this so? 

Poshsalt

uknick said:

Poshsalt said:

Mistral001 said:

When was your trademrk registered?

2023 is the year registered

You said you registered them and then a year later you received a letter.  If you registered them in 2023, how is this so? 

I mean I registered several trademarks but the one someone wants was registered this year.

The letter was sent about 6 months after the registered trademark.

Mistral001

So what you are saying is that because the trademark is not registered in the EU, anybody in the EU could use it.  I am not sure if that is the case, it might well be, but even if it is the case, there could still be a problem with their product being confused with your product and vice versa, should some day you decide to use the Trademark. 

You might have to register all your products in the EU as well as the UK so that the are protected.  It could be one for Patent Attorney.  Note attorney is an American word but it is nonetheless used to describe patent lawyers in the Uk as well as in the USA.

coffeehound

I believe if you don’t have recent evidence of using a registered trademark for the stated product class, it leaves you open to this kind of challenge, and they may have the right to win it.  

tightauldgit

I'm no expert but my understanding was that existing EU patents got grandfathered in by creating identical UK patents which pretty much mirrored the protections prior to Brexit. But new patents created in the EU since 2021 don't automatically apply to the UK so you would need to register in both locales if you wanted protected in both. 

The ins and outs of your specific case seem like something you need proper legal advice on.