This can be a challenging environment for a small business.  In the face of a larger, well-funded company, it is easy to feel the only option is to do nothing.  However, there are steps you can take, both proactively and reactively in order to confront the challenges avoid potentially greater difficulties (and costs) at a later stage.

Long before you need to challenge an application, the most important step is to review your own protection. Question what you have and identify what you don’t have.  Are you still using that logo you registered several years ago or is there a new one?  Have you registered those different product names?

A crucial part of this review should be of the specification listed against each trademark registration – the list of goods or services which identifies what the trademark protects.  Ensure that this covers the right terms for you; a trademark filed many years ago might not have kept up with your developing business leaving you without protection for new products and services.

The trademark specification is also your first opportunity to let others know your area of interest.  This can help deter them.  This can only happen if they can determine your area of interest.  A more general specification might give cause to feel that they can take a risk and proceed.

This review and having a strong trademark portfolio are key to proactive enforcement of your rights.  Having a registration means it is listed on a public register. Larger companies often conduct trademark searching prior to a brand launch.  By having a presence on the register, you are maximising the chances of your rights being found.  This alone may deter another party from pursuing their plans.  This is passive enforcement backed up by active rights management; putting your registrations to work for you. 

Once you have ensured you have the right marks registered for the right specification don’t just rely on this passive enforcement.  Be proactive.

The register has a variety of search options allowing you to search for similar or identical marks.  By using this facility on a regular basis, we can look to identify potentially conflicting new rights before they have become registrations.  It is not fool proof but is a quick search that can easily be undertaken. 

If you do come across an application which concerns you, you have a range of options.  If action is needed, make a note of the deadline to oppose (two months following the date of publication) and consider first reaching out to the Applicant with your concerns – even if they are a much larger company don’t let this put you off. 

Ask yourself is there something they are doing which is not of concern to you.  It might be that a conflict on the Register does not translate into a conflict in the market.  This is where that robust set of trademark registrations I discussed earlier is so useful; it gives you the levers needed to hopefully secure an agreement by using the threat of an opposition.

If this does not work, do not shy away from an opposition if needed.  Whilst it can appear daunting, an opposition is less cost onerous than action in the courts.  The process is streamlined, and costs are normally awarded against the losing party on a fixed basis – you can find the scale on the IPO website.  This levels the playing field between you and a larger party.  It can also encourage the pragmatic resolution of issues.  An opposition does not mean you will have to go all the way to a decision – there is time available in the process through an optional “cooling off” period to encourage you to amicably resolve the issues.

It all comes back to ensuring you have the right rights in place as early as possible.  Having those registrations gives you options to act even against the largest of companies.  Before an opposition is even needed take pro-active steps such as early investment in your own intellectual property rights.  These will reap rewards, enabling passive enforcement and strengthening your hand if active enforcement is needed.   

I would end on a note that whilst you can take on all this on your own, consider seeking advice from a trademark attorney or solicitor.  There are schemes which offer free initial advice and having a knowledgeable advisor take a look can help with your plans in the long run.