Company: UK entertainment agency working with artists, comedians, celebrities, musicians, and performers.
Industry: Music & Entertainment
Defence of trade mark registration and opposition by well-known global brand
Introduction
This UK-based company operates within the music and entertainment sector procuring talent for performances throughout the UK and overseas. The client was referred by another professional firm which did not have experience with intellectual property rights and in particular with trade mark registration and opposition. The client received advice and a strategy that enabled it to retain its trade mark registration along with its company name, domain, website and marketing material (including YouTube videos). In addition the client avoided the need to defend a trade mark opposition matter, along with potential trade mark infringement and passing off claims.
UK Intellectual Property Office: Trade Mark Opposition
The (Pain Point)
The client had completed and filed its own UK trade mark application in order to protect its brand name, company name, domain name, and to help establish and promote its bespoke services within the UK. The client had not undertaken an assessment of current brands and trade mark registrations throughout the EU as well as the UK. It had not appreciated that another company had previously registered an identical trade mark prior to the client establishing its own business and services.
The Challenge Faced
The client’s application before the UK Intellectual Property Office (UKIPO) was subject to an opposition notice by a well-known brand that had already obtained a pre-existing trade mark registration before the UK and EU trade mark offices. This had the potential of removing the client’s application, meaning that the client would lose its opportunity to register its trade mark and consequently incur wasted time and costs associated with its application. Furthermore, the opposing brand claimed that the client was committing trade mark infringement and passing off. This could not only result in the client needing to pay compensation, but also risked the client being required to change its company name, relinquish its domain name, destroy any and all marketing material that used the brand name, and to remove/delete its YouTube videos.
This could also result in the client spending additional time and money to undertake a review of trade marks and trade names in use; change its business name at Companies House; obtain a new domain name; revamp its website; to make a new trade mark application; and to create new marketing material including YouTube videos.
Why Chosen
I have worked with many businesses in connection with IP and those related issues faced by organisations based in the UK and overseas. In particular I have helped companies with trade mark applications via most of the various intellectual property offices around the world due to extensive experience and knowledge in this field.
The client needed to swiftly determine the extent of its risk, resolve the potential opposition matter that was preventing its application from becoming registered, and resolve the dispute arising in connection with the claims of infringement and passing off.
The client needed to understand its position quickly and therefore the company’s owner contacted its current lawyer for help. The law firm did not undertake IP advice and its current lawyer was aware of my experience and knowledge in this area, and therefore recommended my services.
The Response
It was important to listen to and understand the client’s concerns and preferred outcome(s) taking account of the deadlines arising in connection with trade mark opposition, and the infringement and passing off claims. It was essential to undertake a timely review of the client’s trade mark application and its services. In addition an assessment was made of the registrations belonging to the pre-existing trade mark owner along with its services, and to also consider other relevant trade marks in use in the market.
It was essential to provide clear and concise advice to the client, and for the client to take account of the risks involved. It was then possible to agree a strategy anticipating the opponent’s likely responses including both legal and factual arguments. The client was reassured that the claim of passing off would not succeed. The elements of trade mark infringement claimed were weak, albeit the position of trade mark opposition was of greater risk. Nonetheless the client was confident of its position and negotiations took place to dispose of both trade mark infringement claims and that of passing off, along with a negotiated amendment to the client’s trade mark application. This was all achieved for the client and within the timescales and deadlines defined.
UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association
Overall Results
The client:
- obtained its registered trade mark;
- avoided additional UK IPO costs;
- disposed of trade mark infringement and passing off claims;
- retained its company name and domain name;
- continued with its marketing including YouTube videos.
- Use an experienced and qualified lawyer to advise you in connection with trade marks and branding, trade mark applications, oppositions, and revocations (including non-use) as early as possible;
- Use an experienced and qualified lawyer to advise you in connection with Passing Off;
- Beware of attempting to negotiate your own trade mark defences;
- Consider risks to your business and not only appreciate what could go wrong, but how to avoid or mitigate against possible situations;
- Trade marks can affect a number of your business assets and can have far wider implications and detrimental consequences than initially appreciated;
- Suitable and comprehensive IP advice will enable you to quickly and effectively manage potential disputes with less distraction to your business and reduces future costs and risk