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An Expensive Lesson in Trademark Law

An Expensive Lesson in Trademark Law

There are lessons from the recent BBC report about a chicken shop owner in Manchester who lost a trademark dispute against Tesla. 

Mr Ali trademarked the name ‘Tesla Chicken & Pizza’ in 2020. So in 2021 the IPO notified him that Tesla was trying to register its name in the food and drink category. Mr Ali decided to oppose Tesla’s application. He lost because Tesla successfully invalidated his trademark arguing that he was taking advantage of its reputation. 

If you’ve been receiving my newsletter, you’ll remember a recent one about LV Bespoke where I explained the need to avoid using the same or a similar name to that of a well-known brand, even if you’re in a different category.

The reason Mr Ali had secured his trademark was that Tesla hadn’t objected to his application. The IPO had notified Tesla, who chose not to object.

The fact is, trademark owners are not obliged to object. Not doing so, does not stop them applying to cancel the mark at some point in the future.

Well-known brands have many trademark infringement issues to deal with. So, they may make a policy decision to not oppose certain applications, choosing to use their resources to pursue other types of infringing activity.

That Mr Ali decided to oppose Tesla's application shows that he was either not advised or was poorly advised. Any lawyer with an understanding of trademark law would have dissuaded him. As it is, he incurred over £10,000 in legal fees and suffered two years of stress.

This saddens me because his case was entirely avoidable. It should never have happened. He should never have applied to register the mark in the first place.

People need to know that if someone else has rights to a name, their successful registration means nothing. It rests on shaky foundations. 

I blame the culture of DIY trademark registration for the fact that Mr Ali applied to register this mark.

I’ve seen unnecessary suffering for business owners who handle their own trademarking. They miss out on essential advice that would avoid wasting time and money. Also, they often get a poor quality registration.

A related benefit of receiving professional advice is that businesses might avoid having a good name 'stolen' by traders in other countries. If they don’t secure their trademark in other markets they’re likely to find that someone else has registered their name in a key market precluding them from using it once they’re ready to launch there. It’s worth locking down the rights in a name if there’s an intention to trade internationally within the next 5 years.

Intellectual property is where the value in a business lies. So, be sure to get proper advice so you use effective strategies to protect this most important asset of your business.