From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 3 September 2013

In love with one's brand: the risks and the relief

It is generally understood that a bunch of fictional felines who run an IP weblog do not constitute a law firm, and that their posts are emphatically NOT legal advice. This is the way we like it, since several members of the blog team work for law firms that are in competition with one another.  The IPKat, not to mention Merpel, does sometimes receive requests for legal and strategic advice which, at a sufficient level of generality, they occasionally give (things like "on the whole, it's better not to infringe someone else's patent just because you have a hunch they won't mind", or "the words 'I'm thinking of registering as a charity' do not constitute a defence to an action for copyright infringement" or "if you really want to keep it secret, have you thought of not telling anyone?").

Looking through his archives, this Kat found an email received from an enthusiastic young lady with a legal education, but who had gone into business and had become greatly attracted to a brand that she had thought up all by herself, for which she wished to obtain trade mark protection.  She duly filed a trade mark application and, following publication, discovered that an opposition was in the offing.  The opponent was a well-known international corporation and the opponent's brand, if not totally famous, was sufficiently known to this Kat for him to have heard of it even though it was for a ladies' product which he would be unlikely to purchase.  There was also no doubt that, while the mark as applied for by the Kat's friend and that of the opponent were strikingly similar, there were also some small differences -- and it was on these small differences that our enthusiastic young lady pinned her hopes when she emailed Katland for some advice and support in her efforts to fend off this colossal foe.

Having assessed the situation, the Kat recognised it as one he had seen before, on too many occasions.  Our enthusiastic young lady was in love with her brand to the extent that she could not bear to be parted from it.  It was equally apparent that heart of the opponent, a company with ample financial resources, a penchant for litigation and a pretty impressive success rate before court and hearing officer alike, would not melt at the sight of a small, sweet competitor who had fallen in love with her brand.  It took a morsel of persuasion, a soupçon of sympathy and some unabbreviated correspondence through the electronic mail service but, in the end, our enthusiast saw the light and decided not to pursue her application further.

The Kat was relieved: his friend had done the trade mark equivalent of the canoeist paddling upstream to escape the fatal cascades of the Niagara Falls. He was however surprised to discover that his friend was even more relieved than he was.  This is the email he received:
"Dear IPKat

Thank you for your wise counsel. I appreciate it greatly. Your assessment has really helped me to understand the situation from a wider and more fuller perspective and I must say has saved me a lot of time and energy. I could see the clear similarities but being objective to my own business and something that I love has been quite an oscillating challenge, it was a difficult assessment for me to make using my judgement alone and I am very grateful that I sought your opinion as I could have risked going in blinded by the love for the idea I had for my brand, on mere principle alone. The realization is apparent, from a TM and otherwise principles I would have been fighting a losing battle.

On the upside it is reassuring to know there is also still some brain left behind the brand - enough to go and seek out expert advice.

A huge thank you for taking your time to offer you opinion on the matter!! I greatly value it and would not have the clarity that I do now without asking you for your advice.

Have a wonderful weekend, For me I can go out and enjoy the good weather and making some organic juices without having to worry about the Devil wearing Prada haha. I feel a big sigh of relief actually.

Kind Wishes"
Merpel doesn't think this is a happy ending.  In her world, the enthusiastic young lady would take on the mega-corp, representing herself successfully in opposition, cancellation and infringement proceedings, becoming immensely successful yet utterly unspoiled, marrying her childhood sweetheart(s) and living happily ever after.  What a movie that would be!

1 comment:

Anonymous said...

Strange though that in our system the best choice is sometimes to give up rather than take a matter to a decision-making entity, especially when up against the big and powerful. That's why low-cost litigation forums should be available whenever possible, and I don't think that is given the importance it deserves. Being priced out of justice (or at least a hearing) is essentially having justice denied.

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