Combining international protocols and High Court action to protect our clients
Our client, a start up perfume retailer aiming at the upper end of the luxury market, had themselves registered their single word trade mark before the UK Trade Marks Registry. Although turn over on their product was low, sales had been made in some prestigious London outlets, and margins on the perfume products were good.
Our client found out that a large mid to lower end market cosmetics retailer was selling a differently packaged perfume product aimed at the lower end of the market, sold online and through a chain of home sales agents, using the same name.
The competitor had an £800 m turn over and sold products throughout Europe and the world.
Our client approached us to prevent the infringement. An international trade mark application was filed on behalf of our client under the Madrid protocol covering a wide range of countries. Following this, a letter before action was sent to the competitor on behalf of our client which resulted in correspondence between parties, the result of which was inconclusive.
We advised our client to commence a registered trade mark infringement action before the High Court, and a claim form was subsequently served on the competitor using a small firm of solicitors to keep costs low, claiming infringement of a UK registered trade mark and passing off. The competitors firm was represented by one of London's "magic circle" firms of solicitors.
Faced with our clients deployment of an international trade mark application in a wide range of countries together with registered and unregistered rights in the United Kingdom, the competitor offered a co-existence agreement which enabled our client to maintain a monopoly in their main market, the United Kingdom, whilst allowing the competitor to market their own product in a range of countries in which our client had no commercial interest. Additionally, a cash settlement in respect of legal costs and existing infringements was negotiated, in an outcome which was commercially acceptable to our client.
Supporting product innovation through exceptional service and portfolio management
Our client, an entrepreneurial drinks manufacturer and distributor had experienced phenomenal growth in turn over and sales on a range of bottled drinks products since 1998, expanding from a relatively small company to a £70 m turn over. New bottled drinks products were being released every few months, each having their own distinct brand.
The client was previously using an established firm of trade mark agents to manage their portfolio of marks in a wide range of countries. However, costs were high and the trade mark filing and grant process was not keeping up with the pace of innovation and introduction of brands. Delays in communications were encountered, and because the client was dealing with a branch office of a medium sized firm of trade mark attorneys the client was effectively getting a sole practitioner level of service.
Further, the client was using one firm of trade mark agents for pending trade mark applications and a specialist off shore renewals firm for handling the maintenance fees on the granted marks. This meant that the clients files were kept in different locations by two different firms, making the portfolio harder to monitor and manage.
The client transferred their portfolio to Franks & Co. We were able to provide a team of fully qualified trade mark attorneys to keep the existing trade mark applications progressing, file new applications, provide searches and infringement advice, and pay maintenance fees all under one roof thereby reducing response times, whilst maintaining a single point of contact and management for the client. We managed to improve the speed at which trade mark searches were being made, trade mark applications were being filed and applications were progressing through to registration. Further, we provided daily updated online access to our database, so that at any time the client could check online the current status of their trade mark portfolio including both pending applications and registered trade marks.