The phrase trademark troll is actually a label coined by the media to describe a person who is actively looking for gaps in trademark protection and who is filling those gaps by registering trade names or aspects of a business’s branding themselves.
Trademark trolls are targeting medium sized businesses, those who have recognisable brands but who may not have looked in any detail at how they should be protecting those brands.
The goal of the troll is to obtain trademark registration without the brand owner becoming aware of their actions.
If the troll is successful the brand owner will find himself with a number of problems:
- Without having exclusive rights to the name he will face obstacles if he wishes to licence the use of the business name either by a straight forward licence to use or in the context of a franchising model;
- If others are infringing the brand the brand owner may struggle to make out a claim to take legal action owing to the fact that he cannot prove himself as the brand owner. Conclusive evidence of brand ownership is generally evidenced by the trademark.
The troll is aware of the potential for problems and, if he is willing to sell the trade mark back will likely demand a highly inflated price from your business. You should also bear in mind the fact that trolls are not professional trademark agents and they will not have written the trade mark application in such a way that it protects all uses of the brand in the way that you would have done. So even if you were to purchase the trademark back, it would not have the same value as it would have had were you to have registered it yourself.
Karen Edwards Solicitor in our Commercial team says, "You can, in a limited number of circumstances, and with the assistance of an IP professional, challenge the validity of the troll trademark but, as you might expect, this is costly and there is no guarantee of success."
If you are aware of the troll’s application you could follow the standard Intellectual Property Office procedure to oppose the registration of the trade mark prevent the registration. The opposition process itself has the potential to be costly but in the best case scenario a troll will withdraw their application once they realise that you are onto them. The main problem with this method is that you need to be aware of the application in the first place as the time period for opposition is strictly limited to a two month period prior to the trademark achieving registration. Remember, a troll will be doing their utmost to ensure that you do not become aware of the application.
Our Commercial Team, based in Christchurch, also cover Bournemouth, Poole and the New Forest. For a free initial chat, please call 01202 499255 and Karen or a member of the team will be happy to discuss any questions that you may have.