Case Studies

A New Project

A financial coach was starting a new project for which he had a new name, logo and tagline. He wanted help to protect his new brand. We explained he should register two trade marks in order to secure optimum protection.

The 2 trademarks to register would be the name on its own and the logo. This was because the brand name was unique and distinctive, and was capable of being registered in its own right, on its own. Although the name was incorporated in the logo, registering just the logo would not give him the comprehensive protection in the name that he wanted. He wondered whether he could also register his tagline. However, this was too descriptive as it merely explained how he helped his clients. As the tagline was always used in conjunction with their logo, we advised him to register the tagline with the logo as a combined mark.

So, we helped him to register the name on the one hand, and the logo combined with the tagline on the other. This gives him a degree of protection over all of the elements, while minimising the risk of objections. Later on, once he becomes well known, he may well be able to protect the tagline itself.

Fashion designer

Our client, a fashion designer, had not registered her name as a trade mark when she was approached with requests to licence her designs. We immediately registered her name as a trade mark 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 trade mark 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 trade marks 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 trade mark 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 trade mark search, or better still if they had registered a trade mark, they would have identified the trade mark 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 trade mark registration. It was clear from the outset that the name was too descriptive to trade mark 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 trade mark 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 trade marked 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 trade mark 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 trade mark. Therefore the Intellectual Property Office had warned our client that the owner of the other trade mark would be notified unless the trade mark 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 trade mark to register they instructed us to handle it for them realizing they had spent more by trying to do it themselves first time round.