Once Upon A Bike In The Land Of Trade Marks

Waiting to sell your products or services until you had completely re-branded your entire business would put a lot of businesses into administration but before you start you should understand the pitfalls of infringing a registered trade mark.

Business A made and sold good quality and lightweight ‘A1’ bikes for 20 years, mainly in East Anglia but also in the wider UK. Three years ago they applied for and obtained the UK registered trade mark ‘A1’ for bikes and bike sales.

Business B spent the last year developing a new bike range, which after a long consultation with their marketing department, and unaware of Business A’s bikes, decided to brand their bikes ‘A1’. They invested time and money printing brochures, developing an A1 website and painting their shop signs to read ‘A1 Bike Shop’.

Business A became aware of Business B’s use of A1 and instructed their solicitors to write a ‘cease and desist’ letter. This asked them to stop using the ‘A1’ names as it infringed their registered trade mark and could affect adversely their business.

Business B talks to their solicitor about this letter which points out that they are infringing a registered trade mark- but was unaware of Business A when they developed their brand. Their solicitor explains that innocent use provides no defence to this type of trade mark infringement and if they ignore the letter they could be pursued for damages or face a court order to stop trading immediately.

So Business B must now develop a new brand, destroy and re-print all their brochures, cover up their shop signs and take down their brand new website. Perhaps even worse they cannot sell their stock of bikes until they are stripped and repainted.

This short and simple story illustrates that whenever a business launches a new product or service ensuring the proposed trade mark or trade name does not infringe a registered trade mark is absolutely essential. Sadly owning a company name provides no protection at all.

Increasingly registered trade mark owners are actively searching for infringing businesses and products using ‘Trade Mark Watching’ services. Each time an infringer is spotted they pounce to protect their reputation.

The trade mark registration rules changed on 1 October 2007 and Foot Anstey trade mark specialists have been fully briefed on these at the UK Intellectual Property Office. If you have any queries regarding any trade mark issue or want to set up Trade Mark Watching for your brand please contact Marlene Howels (01392 685330) or Matthew Gingell of Foot Anstey (01392 685306).

Published 08/10/2007. The author of this article is Matthew Gingell