Case studies: Why you should trademark your name.

TV chef keeps his eye on endorsement revenue
We advised our client, a television chef, to protect his name and the name of his restaurant as registered trade marks for a wide range of goods and services including entertainment, education, hotel services, kitchen utensils, books, videos and CDs in order to enable him to maximise his exclusive ability to make, sell and endorse products and services.

Without protecting image and trademark name rights(by registration and a trademark), even a well-known personality’s name and image are not protected under UK law.

Sound-alike hijack
A large clothing retailer adopted a trade mark which was spelled differently from our client’s name but was phonetically equivalent and sounded exactly the same when spoken. We had already protected our client's name by trademark registration. We negotiated a sale of the registered name to the retailer for a very substantial sum and our client re-branded and semi-retired on the proceeds!

Attempted name hijack by US competitor
Our client, X Ltd is a UK wholesaler of pharmaceutical products with UK-wide distribution under their UK-registered trademark. A US competitor had filed to register exactly the same name in Europe as a Community Trade Mark.

We filed an opposition and successfully prevented the US competitor obtaining registration of our client’s name.

Competitors with same name
Two software companies had co-existed for over ten years in the UK. After some years of legal wrangling, our client’s competitor was about to obtain registered UK trade mark rights in the name.

We successfully stopped the competitor and brokered a deal under which our client was paid a substantial six-figure sum and took the opportunity to distinguish his products from the competitor by adopting a much more attractive modern name and image.

We settled and negotiated the necessary legal agreements to implement the arrangements including holding the domain names “in escrow” for a period of time before relinquishing them to the other company.

Overseas client stops UK distributor
Our overseas client, a Greek manufacturer of confectionery products, terminated their UK agent only to find that the UK agent had registered their trade mark in the UK. We negotiated a transfer of the mark back to our client for nil cost.

Domain hijack
We prevented a business in France from stealing and continuing to use our client’s web domain name and website copy, obtained undertakings from the infringers against future use and obtained payment of our client’s legal costs. Trademark registration of our client's name and brand was a key part of this strategy.

Global gaming name
We helped our client Y Ltd choose a name for a global internet casino business and orchestrated availability searching in all the main world territories to establish legal availability.

Exclusivity for invented word
A client in the motor trade invested in a hybrid consumer vehicle. We helped him get UK exclusivity for the brand name he also invented for the new product.

Publisher registers titles as trade marks
Our client is a well-known publisher and distributor of books printed in a certain distinctive style, size and format.

Our client was not able to rely on copyright law to stop competitors copying the same style, format and subject matter with an identical product. Instead, we successfully registered many of our client’s titles as trademarks which had the commercial effect of significantly reducing the competitor’s ability to copy successfully and restricted the competitor’s market share.

Trademark rights escape liquidation
Acting for a broadcasting company, we established that ownership of the main brand name was held outside of the company by the shareholders, not by the company itself. They had licensed the brand to the company.

When the company went into liquidation the brand was not lost and the shareholders were able to start another business using the same product name having preserved the goodwill in the name.

Keywords Infringement
At the moment the law in the UK is unclear as to whether it is permissible to use other people's trademarks as keywords in your cost-per-click advertising campaigns. A very well-reported case, referred to as the "Mr Spicy Case", when a sole trade called Mr Spicy (his registered trademark) tried to stop Sainbury's and Yahoo from using the word "spicey" as a keyword for competing food products seems to suggest that it is quite legal to use other people's registered trademarks as keywords. However, this seems to be an implausible conclusion to draw from the case as the word in question "spicey" is a commonly used word to describe savoury food. Three cases have been referred to the European Court of Justice by the French national courts for a determination on the question. Suffice to say that we are regularly successful in preventing the use of our clients' registered trademarks as keywords by competitors.

Name secures idea
Our clients came up with a fantastic new product idea for a seasonal beer product with a particular flavour. The idea was not protectable itself, but we helped them come up with a definitive name for the idea and we registered it as a trademark. The name has passed into general usage and has effectively preserved their market dominance for the product in spite of many imitators.

Counter the counterfeiters
Acting for a well-known menswear wholesaler whose brand name and products were being copied “wholesale” and sold through markets at knock-down prices, we coordinated legal proceedings and a local government investigation to successfully stamp out the counterfeit product substantial volumes of which were impounded and destroyed.

Whatever your trade mark question or concern please contact us for a free legal consultation and we will be pleased to provide you with some free guidance.