Case Studies

Is a competitor using your brand as a domain name?

Sometimes a business begins using a name without first checking that the name is legally available. Investing in a name, particularly online, where consumers are easily confused by similar domain names can have significant implications for a business.

Our client, an IT consultancy, came across another company using a near identical domain name. That business had also registered a company and was using the name as its main brand name. Things came to a head when a potential customer of the competitor called our client asking to speak to the competitor. He had confused the two businesses. Fortunately, our client had registered a trade mark for the name several years before the competitor had started in business. So we were able to take swift action to protect its position.

We wrote to the competing business, explaining what had happened, and asserted our client’s rights over the name. We asked the competitor to immediately cease using the name, to pay our client’s costs and damages, and sign an undertaking to that effect. If necessary our client was prepared to go to court to seek an injunction to stop the competitor using the name it had adopted. that proved unnecessary as the competitor took advice and rebranded. Control of the domain was relinquished to our client, and the company changed its registered company name.

While our client was delighted with such a quick, comprehensive result, the impact on the competitor was severe. It had to change all its branding on its website, business cards, social media profiles as well as its bank accounts and stationery. They effectively vanished overnight and had to start over building name recognition using a new name, which they had hastily chosen.

The moral is clear. Before using a name in business, be sure to check that it is a name you can own.  The risk is a real one, and the cost to manage that risk is quite trivial – so don’t get caught out.

Sell an app for mobile devices

Our client, with the help of designers, developers, marketers, sound engineers and a range of other contributors, built an exciting new app and quickly identified a buyer.

Timescales were tight, there were numerous individuals and companies involved, and there were a range of rights at stake, including commercial rights to royalties, marketing obligations, and IP rights in software, video, audio, graphics, content, and trade marks.

Software is a bundle of many different rights, in this case originating from a whole host of contributors. We had to ensure that our client owned the necessary rights or had appropriate permissions in place in order to be able to meet the sale terms.

We identified the different intellectual properties incorporated in the app, who created them, and who owned them, and worked with our client to ensure that the rights in the various materials were either transferred, or licensed with the necessary permissions. We put in place documentation to protect our client in case parts of the app software, the music, graphics or content it incorporated, were found to be copied without consent.

These steps put our client in the best position to negotiate with the buyer, make sure they were comfortable with the transaction, and ensure that the sale went smoothly.

Fashion designer

Our client, a fashion designer, had not registered her name as a trademark when she was approached with requests to licence her designs. We immediately registered her name as a trademark for a wide range of goods and services including cosmetics, accessories, books, and videos in order to enable her to maximise her exclusive ability to make, sell and endorse products and services. We also extended the registrations to a number of other key markets such as the USA, Japan, and Europe.

Online Fashion Retailer

Company Y was a UK business that had a strong online business selling a selection of fashion goods from its website. It had no trademark registration either in the UK or elsewhere despite having traded for 8 years. Then one day a few customers began calling to enquire about the new shop they had set up in New York. As they had not set up any shops let alone done so in New York, the company immediately investigated and discovered that one of their customers had set up the shop.  He had used their brand name for this purpose and was selling similar items from his shop in New York to those the company was selling online. Company Y quickly filed for trademarks in both the UK and USA and incurred substantial costs to stop the business using its name. It only managed to do this after we gathered substantial evidence to show that its US customers formed a sufficient customer base in the USA for the company to have first use of the name. Extensive correspondence ensued until finally a settlement was reached and the shop changed its name. But it would have been so much easier and less costly if the company had registered trademarks before encountering these problems.

Name usage

Two individuals had set up in partnership in the renewable energy industry. They had been trading for many months and business was doing well. They had a memorable and distinctive name. Unfortunately, they became aware of a similar business, X Ltd offering similar services under the same name when they received enquiries from people who thought they were in fact X Ltd.

It was only a matter of time before X Ltd became aware of the partners and sent a letter claiming passing off and trademark infringement. The partners had little option but to change their business name, having to write off a small fortune spent marketing and promoting the brand name for renewable energy solutions. Had they cleared the name with a trademark search, or better still if they had registered a trademark, they would have identified the trademark owned by X Ltd  and could have chosen a different name before starting their business and spending money on marketing and promoting their business.

Descriptive name

A newly established business was looking to protect their brand name with a trademark registration. It was clear from the outset that the name was too descriptive to trademark and would not be a good vehicle for capturing brand value, as competitors could freely use the same name and customers might well be confused as to who was whom.

Needless to say they were disappointed and initially were reluctant to find a more distinctive name.  We helped them reconsider the brand name, using the descriptive one as a slogan. Needless to say, the new name they chose was very distinctive and positively helped to launch their business. The investment made in choosing a good brand name was completed with a trademark registration.

Toy Company

Company X makes toys for children. One of its most popular products includes a package of inexpensive toys each designed and invented by the company.  Additionally they are arranged in a specific way in very distinctive packaging. This product has been on the market for over 10 years and sells well at Easter. There are no other companies selling the entire selection of toys in that packaging. Company X has not trademarked the name of the product nor had it secured any design registrations.

Suddenly one of its competitors brought out the exact same selection of toys in very similar packaging in time for the Easter season. They use a similar name to market the product. Company X’s main option was a passing off action, and in order to reduce the damaging effect on its Easter sales it had to consider an injunction which it could ill afford. A great deal of work was done to prepare the action swiftly, and to collect evidence that consumers were confused into believing the new toy package was being made by Company X.  Although the competitor insisted it was doing nothing wrong it decided to stop selling during the Easter season, just as Company X was about to initiate injunction proceedings.  Company X is now considering its options for the longer term.

Logo infringement

Our client had applied to register its own trademark comprising a Pegasus symbol. Unfortunately they had not done any searches and there was a resemblance between its Pegasus and that of a competitor in the EU that had already registered an EU trademark. Therefore the Intellectual Property Office had warned our client that the owner of the other trademark would be notified unless the trademark application was withdrawn or suitably amended.

We were able to suggest some changes to our client’s classifications, and overcame the Registry’s objections, and luckily the client’s application proceeded to registration without opposition. Next time this client had a trademark to register they instructed us to handle it for them realizing they had spent more by trying to do it themselves first time round.