Brand Protection & Trademarks - Case Studies
We carry out same day clearance searches on names, which you are considering by doing a trade mark search and a report. The search will cover the UK, and European Community registers. Here are some examples of experiences our clients have had with trademarks.
However, as one of the building blocks of a business’ brand is a registered trade mark, ultimately to create a valuable asset, you need to register trademarks to claim exclusivity in your image, and before that you will need to have at least checked that you are not using someone else’s trademark when selecting your brand.
Case 1
Our client started an accountancy business, and after some 18 months received a letter from solicitors acting for a tax publisher, who had a registered trademark over a similar but quite different name. Our client was using the name in another country altogether. The tax publisher claimed to have rights in that area through its website sales. After initial advice, when our client queried the tax publisher’s claim to the name for accountancy services, we were able to establish that the publisher had registered the name as a trademark for accountancy services less than 5 years ago, and therefore had rights even though it had not yet begun to use the name for accountancy services. Our client decided to negotiate a settlement as it wanted to avoid an expensive legal battle – it was far cheaper to cease to use the name than to insist on its rights to do so.
Case 2
Our client asked us to register its name and logo as a trademark. The pre filing search discovered an unregistered trademark proprietor using the same name for a similar business within Europe. The client faced a difficult choice – to press on and register a European trademark, and hope for the best that the owner of the unregistered right would not discover its existence for 5 years, after which time the proprietor of the CTM trademark is able to stop anyone else using the mark. It decided to take the risk and apply to register. We are waiting for the 3 month opposition period to be completed, and the client is keeping fingers crossed that the user of the mark will not find out about its application.
Case 3
Our client had a considerable internet presence, selling numerous articles online via its website to users in this country, in Europe and in the States. Then a competitor set up a physical shop in the States selling virtually identical products, and because the name was so similar to our clients’s name the competitor got a lot of publicity for its new shop. Our clients’ customers began to phone to congratulate them on opening the shop in the States! However, although customers were clearly confused into believing our clients owned the US shop, so that our client would have had a strong case if it wanted to sue the competitor, because it lacked a US trademark, the costs of taking action against the competitor were too much to afford. We immediately applied for UK and US trademarks for our client, who is hoping that the competitor does not oppose its application, and force it to face legal costs. It would have been so much simpler if the US trademark had already been obtained.
For expert advice about trademarks, and brand protection please visit our website and contact us today.
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