What Happens If Someone Challenges Your Trade Mark?

In this episode of Figure 1: an IP conversation, Albright IP Managing Director Robert Games is joined by Trade Mark Attorney and Associate Joel Weston, who specialises in resolving brand disputes, to walk through a real-life trade mark conflict and the practical steps involved in handling it. After receiving a letter before action threatening opposition, a business is faced with a difficult decision: withdraw, defend, or negotiate. Using this scenario, the conversation unpacks how these disputes arise, what legal rights are in play, and how a strategic response can shape the outcome. Trade marks don’t just exist on the register, they exist in the real world. And sometimes, prior use can be just as powerful as a registered right. Through this example, the episode highlights how gaps in due diligence, broad specifications, and lack of professional advice can quickly lead to conflict, and how those situations can often be resolved without going the distance. The episode covers: • What a letter before action means and how to respond • The key grounds for opposing a trade mark application • How prior use can challenge an earlier registered right • Why the UKIPO only considers registered marks, not marketplace use • The difference between using a trade mark and owning one • When withdrawing an application may (and may not) resolve the issue • How coexistence agreements allow businesses to operate side by side • Why most disputes settle, and what influences that decision • The risks of filing a trade mark without professional advice This episode is aimed at founders, SMEs, and brand owners who want to understand how trade mark disputes work in practice, and how to protect their brand while avoiding unnecessary cost and risk. Figure 1: an IP conversation. Real scenarios. Real strategy. The protection your business needs. Subscribe to Figure 1: an IP conversation for more discussions on protecting innovation, creativity and business growth. Want help protecting your brand? Visit Albright IP: www.albright-ip.co.uk 00:00 - Intro 01:57 - Can an owner of an earlier registered trade mark require me to withdraw my application after it has been accepted and published, and on what legal grounds could they challenge it? 03:32 - Can prior use of a trade mark prevent challenges from earlier registered rights? 05:34 - Why does the UKIPO include earlier marks in search reports but not assess real-world use when examining trade mark applications? 06:44 - If I withdraw my trade mark application, can I still continue using the mark? 08:22 - If the other party operates in a different field, how does that affect the strength of their trade mark challenge and our response? 10:41 - In practice, are most companies open to settlement when faced with trade mark disputes? 14:21 - From an attorney’s perspective, is it worth seeking professional representation for trade mark filings to avoid potential costs and complications later on? 17:15 - Outro