What's in a name?
Wilkin Chapman Solicitors' Michael Squirrell looks at the importance of seeking legal advice when it comes to the intellectual property of a business.
The Sunday Times’ Business section reported on a string of incidents involving multi-national operators trying to force the hand of smaller businesses in trade mark battles.
By sending letters claiming infringement of their trade marks together with requests to carry out a name change, the ‘big boys’ were flexing their muscles in seeking brand protection. There is of course nothing wrong with that, although some looked to be using the proverbial sledgehammer to crack some pretty small nuts.
Regionally there have been cases relating to brand management with which Wilkin Chapman solicitors have been involved.
Firstly, an agricultural business planned to launch a new brand name similar to a registered trade mark owned by a supermarket chain. After a short investigation, it appeared that the supermarket had never used this mark in trade.
Our clients applied for a new trade mark, whilst also filing a revocation application against the supermarket’s mark, on the grounds of non-use of the brand in trade. The action was successful and the supermarket giant agreed to the application to effectively strike out all of their rights in the registered brand.
Secondly, we acted for a retail business which had created a brand name and logo incorporating its location. Unfortunately, the name was the same as that used by a household brand.
Wishing to protect their branding, our clients applied for a ‘logo’ trade mark. This was done knowing that their mark potentially conflicted with the existing registration, but also recognising that objectively there was little chance of confusion.
The household brand served a notice of objection to the application, on the grounds of similarity to its existing wide-ranging registered trade mark. Refusing to back down, our client stood firm and, after an amount of legal to-ing and fro-ing, the household brand dropped its opposition.
Although the above examples were successful, it is essential for business owners to check before launching a brand, as trade mark infringement can be expensive. Simple, relatively inexpensive legal steps can be taken to ensure that a new business venture is not at risk.