Our client had a company which designed and sold jumpers all over the world. The jumpers were made by a manufacturer here in England. Our client had been using the same manufacturer since they started up. When they eventually decided to register a trademark in England they found that the manufacturer had already registered a trademark for the brand name of their jumpers. They would like to go to another manufacturer but are afraid to because of this registration. They are having to weigh up their options, which are to rebrand or to take steps to have the manufacturer's trademark revoked.

Protection in a Design

One client designed a type of plate that can be used by people trying to lose weight. The plate was divided into different sections by the type of food so someone can monitor their portion sizes. They envisaged patenting the idea and then selling it to a larger company.

After having a patent search done we found that this idea had already been produced and so was not capable of patent protection. In order to protect their plate they instead registered for a European Design and also protected their brand name through trademark registrations.

Partnership Dilemma

Our client and his friend began publishing a magazine for metal detector enthusiasts. They had no formal agreement as to how the rights in the magazine would be divided if the partnership dissolved. The magazine was published for 15 years building up a substantial following and reputation. After several years of disagreeing over how the magazine would be run and managed the two partners decided that they no longer wanted to work together but without agreeing who would run the magazine. Our client wanted to keep publishing the magazine so decided to apply for a trademark for the magazine title. His partner opposed the trademark registration because he also wanted to keep publishing the magazine. We were able to negotiate a settlement where our client's partner dropped the opposition and transferred all of his rights in the magazine.

QA Electronic Imports are a specialist wholesaler in the electronics industry. Their core business is importing electronics from China for onward sale to other wholesalers and retailers in the UK market. QA Electronic Imports has established a solid business market in the UK. Despite the experience of the purchase director of QA Electronic Imports, they were unfortunate enough to have a supplier supply them with counterfeit goods, which was only realised once they had supplied several batches of the goods to their wholesale customers. The genuine manufacturer of the goods became aware of the problem and threatened QA Electronic Imports with legal action. After careful negotiation spanning several weeks, QA Electronic Imports had to only pay minimal costs for their infringement. Had they immediately settled to the unreasonable demands they were asked to settle, the viability of the business to continue was doubtful. Learning from the experience, QA Electronic Imports have changed their business processes to help prevent this from happening again.

Descriptive Name

A newly established business was looking to protect their brand name by a trade mark registration. It was clear from the outset that the name was too descriptive to register as a trademark and prevent others from using it for the services they offered. They were a little disappointed to hear that they ought to find a more distinctive name for their business if they wanted to protect the name by trademark registration, but were pleased that they had an opportunity to reconsider the brand name early on before investing in launching the name nationwide. Needless to say, their new brand name was distinctive and they felt more assured in investing in a brand which would generate Intellectual Property Rights. The launch was successful and their brand is now widely available and protected by a registered trade mark.

Logo Design

Our client was concerned to protect his logo which he himself had created. He had a budget either for a trademark registration or a design registration but not both. On finding out that design registration would no longer be an option if not proceeded within the first year of the life of his logo, our client opted to proceed with a design registration. His business was a success, and he returned two years later to register the logo as a trademark.

Logo infringement

Our client was using a logo comprising a Mermaid symbol.  After a year of using the logo they came to us to register this logo as a trademark. 

Unfortunately they had not done any searches before embarking on using the mark.  When we did our pre filing trademark search we found that a competing business was using a mermaid logo which they had registered as a trade mark over 5 years ago.  The logos were too similar for our client's application to be worth pursuing.  Nevertheless, against our advice our client decided to carry on using the logo even though in doing so they were infringing on the competitor's trademark.

We heard no more about the matter, until a few months later our client called having received a cease and desist letter from the competitor's solicitors.  We were instructed to act on their behalf.

We wrote letters, and were able to negotiate an extension of time in which to withdraw the logo and replace the marketing material. Instead of withdrawing everything within 7 days, they were given 3 months in which to change their branding.

We performed some searches before a new logo was designed, which we registered as a trade mark. for our client, without incident.

Our client will never use a logo without first having a trade mark search again.  They spent a lot of money unnecessarily, even though they got off lightly.  Moral of the story is don't wait for events to force your hand, and secure your trade mark rights as soon as possible.

Copyright

Our client was the owner of a start up business with limited resources.  He had thought about the branding of his business and wanted to protect his logo.  He decided his budget would not stretch to a trademark or design registration.  However, the price of strengthening his rights in his logo by validating it with a statutory declaration was an investment he was able to afford.  Accordingly, he registered his copyright in this way as a first step. 

Copyright Assignment

Our client's friend had produced a logo for his wholesale supply business.  Our client intended to use the logo widely on his food products and instructed us to ensure he had all necessary rights to his logo.  Accordingly we arranged an assignment of the copyright from our client's friend to our client as a first step.  We then registered the logo as a European design, and also registered it as a European trade mark.