Trade mark opposition case studies

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Name theft following Business Break-up

We acted on behalf of a major partnership of marine architects following a partnership dispute to stop some partners who had left the firm from effectively stealing the partnership name by registering the name as a registered trade mark. Fortunately, we were notified of the applications in time to file formal trade mark oppositions that effectively blocked them and brought them back to the negotiating table where a proper commercial settlement including legal ownership of the name was achieved.

How to Block Web Traffic Hijack Tactics

As a general rule, the owner of a registered trade mark can prevent the same or a similar name being used as a domain name in the same line of business. There are a few high profile court cases that support this. Often competitors try and file similar trade mark applications in order to support their use of either the same, or a similar domain name, in an effort to hijack the Web traffic of their competitors. We recently acted for a large communications agency against a competitor who was using a variation of our client’s registered trade mark as a domain name thereby hijacking our client's pay-per-click Web traffic. We filed a trade mark opposition blocking a supporting but conflicting trade mark application made by our client’s competitor. Under the new Registry procedures such ill-intentioned applications may well succeed unless the existing trade mark owner files an opposition promptly. In those cases the price of delay will effectively be the loss of substantial Web traffic business.

Ex-Employees Acting in Bad Faith

We acted on behalf of a software company that had failed to register its trade mark although it was a very well-known brand. Several key developers left and set up a competing business. They tried to register the trade mark of their previous employer as part of a competitive strategy. We successfully opposed the application and prevented them hijacking the goodwill of their previous employer.

Protecting A Good Name From Being Diluted By Similar Names

We acted on behalf of a major supplier of consumer audio equipment sold under a well-known household name to prevent various would-be competitors who were selling cheap knock-off copies from registering trade marks that were very similar to the trade marks of our client, although not exactly the same. The applications that we successfully opposed by filing formal trade mark oppositions used elements of our client’s trade mark that were sufficiently closely connected with our client to constitute a potential infringement of our client’s trade mark. We successfully argued that this would have substantially diluted our client’s legal rights and would have led to confusion in the mind of the public. The point is that the registration of similar names will now occur unless they are opposed by way of formal trade mark opposition and these similar names can be sufficiently close to an existing registration as to substantially devalue the commercial impact of the existing registration.

Olympics 2012 - Forbidden words

Marketing around the London 2012 Olympics is specifically protected by Act of Parliament (The London Olympic and Paralympic Games Act 2006) that prevents business from using certain ordinary dictionary words in trade without permission from the British Olympic Association. These terms include “summer”, “games” and “London”. We advised our client, a clothing company, on how to avoid legal action while still marketing sports clothing to a wide audience.