Helping Clearview see off a trade mark opposition

Helping Clearview see off a trade mark opposition

Steve Carroll set up Porterdale Ltd seven years ago, having previously worked as a financial director for other businesses.  He recognised that for many businesses, the inability to produce robust forecasts is a significant barrier to success. His vision was to create a cost effective, user-friendly platform that would empower and educate business owners, giving them the financial information they would need to grow their business. The name of the platform Porterdale developed is Clearview.

Clearview is an online forecasting tool that helps business owners forecast the monthly cash flow, balance sheet and the profit and loss of a business. The platform allows business owners to create industry standard forecasts without the need for other accountancy software solutions or creating complex spreadsheets. The forecasts Clearview produces can be used for fundraising, budgets and cash flow management.

From his business advisory experience with Porterdale clients, Steve was aware of the difficulties businesses often experience when they fail to register their trade mark early on in their business life cycle. Steve wanted to ensure that any investment in the Clearview brand was protected and he understood that a trade mark registration was the most cost effective way of protecting the Clearview brand.

As a Harper James Enterprise customer, Porterdale receives one hour of legal advice each month as part of their subscription plan. They used the accrued time and contacted our IP team to help guide them through the trade mark application process.

When asked about the Enterprise plan, Steve said

The subscription based model of the Enterprise Plan almost pays for itself and is great value for money, especially compared to the hourly rates of other law firms. Spreading the cost of legal support helps with cash flow and there is no trepidation or fear around costs when contacting Harper James for legal support.

Gemma Pickavant, an Intellectual Property solicitor at Harper James, applied to register three trade marks for Porterdale. Unfortunately, two of those trade mark applications were opposed by another company. The other company argued that the trade marks applied for by Porterdale were too similar to their own registered trade marks, that the goods and services that protection was being sought for were similar, and as a result there was a risk of confusion in the marketplace. Steve wanted to avoid a legal dispute with the other company and asked Gemma to resolve this issue in the most practical way possible. 

Gemma negotiated with the legal representatives of the company opposing Porterdale’s trade mark applications and she was able to find a resolution which both parties were happy with. Porterdale provided undertakings and amended their trade mark specification to specifically refer to their key business areas, and to exclude the other business’ key business areas. The result meant that Porterdale was able to register the Clearview trade marks and both brands will be able to co-exist.

Reflecting on the case, Gemma Pickavant said:

When faced with an opposition to a trade mark application, if there is little chance of confusion in the marketplace then it is always worth exploring the possibility of co-existence with the other company. Agreeing to limit your trade mark specification is an easy way to provide assurance to the other company that you won’t encroach into their market space whist allowing you to continue trading in your own market space with the trade mark protection you need to protect your own brand.

When asked about working with Porterdale, Gemma said:

Steve and Lindsey were really easy to work with, making it clear from the outset what the company was hoping to achieve whilst remaining realistic about the options available to them. Their willingness to limit their trade mark protection went a long way to helping resolve the opposition in an amicable way, allowing both parties to co-exist.

With the trade mark issue firmly behind them, Porterdale aims to grow the Clearview userbase across the UK, helping business owners make better informed financial decisions.

About our expert

Gemma Pickavant

Gemma Pickavant

Intellectual Property Solicitor
Having originally joined us in 2016 as a legal assistant, Gemma trained as a solicitor with Harper James and qualified as an intellectual property solicitor in 2021. Gemma has a strong corporate background which enables her to see the bigger picture of a business and informs her strategic advice.

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