Written by Igor Demcak
Founder & Trademark Attorney
Yes, previous use of a brand before being trademarked can help in many cases, most notably in jurisdictions where the first person to use the mark gains earlier recognition in granting trademark rights, such as in the US. In countries like the UK and the EU, previous use can be utilized if the IP Office raises an issue of confusion related to prior filed similar trademarks.
Previous use can also be used in the case of invalidation of a trademark that is not being used and during opposition proceedings.
Ahead of utilizing any of the above-mentioned strategies, you should consider how long you have been using the brand and how well you are recognized as being the source of goods and/or services belonging to the brand in the customer's eye. In order to prove prior use, yearly marketing spend and revenue will have to be provided in order to justify your claim for a trademark.
I found out my mark is similiar to an already existing trademark. What should I do?
Does an EU trademark have to be used in commerce before registration?
Can my competition challenge my trademark after it is successfully registered?
What sort of documentation is required to register a trademark with the IPO?
If I receive an office action, can I still save my trademark?
Why do I need to list goods and services on my trademark application?
Can someone steal my trademark away from me while I wait for it to be registered?
Is it worth going forward with the trademark registration given the high risk of opposition?
Our team of experienced trademark attorneys is here to help you! Simply send us an email outlining your request and we'll be happy to assist you.
