Whilst, at first blush, a potential intellectual property dispute may feel like cause for concern, this can instead be an opportunity to reflect on your IP strategy more generally, and to think about how you can strengthen your portfolio to support your long-term business goals.
Find out from our intellectual property partner, Lindsay Gledhil, how a dispute over your business’ trade marks can actually be the perfect opportunity to revisit your trade marks and wider IP strategy, and strengthen your protection across your whole IP portfolio.
Example scenario: trade mark dispute around business name or logo
We are often approached by clients concerned that another business is trading under a business name or using a logo that is the same or similar to theirs, and they want to know what they can do about this.
What information will we consider when looking at a potential trade mark infringement?
First of all, we’ll take a look at what the rival business is doing - for example, comparing the branding on their website to your branding to see where the similarities lie.
We’ll then consider what registrations you hold – for example, you may have registered your brand name or logo at the Intellectual Property Office or the European Intellectual Property Office as a trade mark, which puts you in a great position in terms of defending your mark. However, things can become a little more complicated when we look at the specifics of your registration and consider how your branding strategy may have evolved over time – more on this below.
If you don’t have a registered trade mark, but your brand has been established for a long time, we will consider whether there is scope to argue that you’re an 'earlier rights holder' and that the rival brand is 'passing off' their goods or service as yours, causing potential confusion between the two brands.
What wider conversations does this trigger about your intellectual property?
As mentioned above, the discussion about a dispute can sometimes turn into a broader discussion about trade mark and branding strategy as we delve deeper into how you currently utilise your trade marks and other intellectual property.
You may have amended and updated your logo since you first registered it and realise that you need to update your trade mark registration to reflect the form you are using now. Or you may have started using your trade mark in a variety of ways that are not reflected in the classes of use you originally registered for your trade mark. It may even be that you weren’t initially able to register your trading name as a trade mark as it was too similar to the name of the goods and services you offer, but through your use of the mark over a prolonged period, the mark may now be distinctive enough to be registered.
How to build on this and develop a more complex IP strategy
So, it may be that, on reflection, you decide to take some steps to secure the protections you have in place for the IP at the heart of your business, rather than focus on a potential infringement that may not seem quite so important in the context of your key IP assets. Suring up your existing IP will mean that you can put your best foot forward if you do decide that it is necessary to take action against the infringer.
You may find that we end up with a ‘to do’ list, which we’ll review with you and assess in terms of priorities and next steps, whilst being mindful about competing demands on your finances and your broader commercial objectives.
Different elements of your evolving IP strategy
There are many elements to think about when managing your ever-evolving IP strategy, but the key thing to bear in mind is that you should seek to protect, exploit, and defend your IP in order to make the most of it. Our expert team of IP lawyers can help with all aspects of your IP strategy. We can conduct a comprehensive audit of your entire portfolio and help you plan a strategy that capitalises on your existing IP, assists you in meeting your commercial objectives, and supports international expansion. We can also advise you on licensing deals and how to handle disputes as and when they arise.