Someone registered your brand name: what can you do?

Owners often assume that long use and customer recognition secure the name automatically. They do not. Whoever files first is examined first, and once someone else holds the registration the earlier user can be asked to stop using it on the same class of goods.

Two situations are common: a competitor or former distributor registering the name in their own name; and someone registering many names to sell back to the rightful owners later.

Both are still fixable, but at several times the cost and time of having filed at the start, and with no certainty of outcome.

What should you check first?

• Find what stage the other application is at — under examination, published for opposition, or registered. Each calls for a different route.
• Check which classes and specification it covers. If they are different from what you sell, it may not affect you at all.
• Gather evidence of your own use and its start date: receipts, tax invoices, advertising, online listings, and the company registration itself.

What can you do once someone has registered it?

• While published for opposition, file an opposition within sixty days of publication — the fastest and cheapest route, and the reason to monitor publications.
• Once registered, sue in court to cancel on the basis of a better right, which needs solid evidence of earlier use and must be brought within five years of the Registrar's order to register.
• Where the registrant has never actually used the mark, petition the Trademark Board to cancel it for non-use.
• Negotiate an assignment, which is sometimes cheaper than litigating — but assess your position first, or you negotiate from weakness.
• Adopt a new name and register it properly, which is occasionally the lesser loss compared with a fight lasting years.

What evidence actually wins?

• Dated, continuous evidence of use predating the other application.
• Evidence the other side knew of your use — a former distributor, a former employee, or a prior trading relationship.
• Evidence that consumers associate the name with you: sales, advertising spend, press coverage.

How do you stop it happening again?

• File before launch, not after the product becomes known.
• Register in the name of the operating company, not an individual.
• Cover the classes you will expand into.
• File in the countries you export to — a Thai registration has effect only in Thailand.
• Bind distributors contractually not to register the mark in their own name in any country.
• Keep renewals on schedule; a lapsed mark invites someone else to file over it.

This page is general information, not advice on your situation. The outcome of an opposition or cancellation turns on the evidence in each case. If someone has filed over your mark, contact the firm quickly — the deadlines are short.