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Case Studies: As a digital business – this is why you need to care about IP


Own your trademark, so you can license it

Our client, a fashion designer, had not registered her name as a trademark, 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. This protected her right to use her name to endorse her desired products and services. We extended the registrations to a number of other key markets such as the USA, Japan, and Europe too so as to protect her trademark outside the UK too.

Protect your name in other markets

“Fashionbrand”, was based in the UK and had a strong online business selling fashion goods from its website. It had no trademark registration anywhere despite having traded for 8 years.

Then one day a few customers began calling to ask about the new shop in New York. Fashionbrand hadn’t set up any physical shops let alone in New York. When the, company investigated it discovered that one of its customers had opened the shop using the Fashionbrand name. The shop was selling similar items to those the company offered online. Fashionbrand quickly filed for trademarks in both the UK and USA and took action at substantial cost to stop the business using its name. It only managed to do this after we gathered substantial evident to show that its US customers formed a sufficient customer base in the New York for the company to have first use of the name. Settlement was reached, and the shop changed its name after extensive correspondence. But it would have been so much easier and less costly if Fashionbrand had registered trademarks before encountering these problems.

Make sure you are not infringing on another business’ rights

Our client was a partnership of two individuals. They had been trading for many months and business was good. They had a memorable and distinctive name. Unfortunately, they became aware of X Ltd offering similar services under the same name, because they received enquiries from people who thought they were in fact X Ltd.

Soon, X Ltd became aware of the partners and sent them a letter claiming passing off and trademark infringement. The partners had little option but to change their business name. They were clearly in the wrong. They had to, write off a stock, wave goodbye to their marketing investment in their domain name. Had they checked that they were free to use the name by having a legal opinion and then registering a trademark, they would have identified the trademark owned by X Ltd. Instead of proceeding with that name they could have chosen a different name before starting their business. This would have avoided wasting time and money on marketing and promoting a business name they were not free to use.

Choose a name that is not descriptive

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. Their new name was checked internationally and as it was very distinctive there were no problems with the name anywhere. The name has positively helped them to launch a successful business. The investment made in choosing a good brand name was completed with a trademark registration.

Toy Company

“Toyco” makes toys for children. One of its most popular products is a package of inexpensive toys invented by the company, and arranged carefully in very distinctive packaging. It had been on the market for over 10 years, and sold particularly well at Easter. Toyco discovered that it was being copied by a competitor using a visually similar product. Toyco had not secured any design registrations.

The competitor was using packaging, and a similar name too. Toyco’s main option was a passing off action. 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 showing that consumers were confused into thinking the new product was made by Toyco. Although the competitor insisted it was doing nothing wrong, luckily for our client it decided to withdraw its products during that Easter season, just as Toyco was about to initiate injunction proceedings.

Logo infringement

Our client had applied to register its own trademark, a Pegasus. Unfortunately, it did not think to carry out any searches. A competitor had already registered an EU trademark for a similar Pegasus symbol. The Intellectual Property Office warned our client that the owner of the other trademark would be notified unless the application was withdrawn or suitably amended.

We were able to suggest some changes to our client’s classifications, and overcame the Registry’s objections. With our help, the client’s application proceeded to registration without opposition. Realising that they had spent more than necessary the first time round, our client instructed us to handle their next registration.


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