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.