Case Study – Trade Mark For A Fashion Business

Creative Thinking on Difficult Trade Mark Case Gives us a Shot

Our client is a fast-growing label in the fashion industry. It has attracted investment to position itself as a global brand and, despite stiff competition, its products are selling well and the business is set for success.

In advance of a further funding round, the client sought our help for a problem that had come to light while trying to register its brand in the US. The solicitors who made the application had advised that there was a prior mark in the US that was blocking the registration of the client’s mark. Of more concern, they also advised that the name of the blocking mark and the goods it covered were so close that nothing much could be done to overcome the US registry objection other than for our client to change its name.

Such a drastic move was out of the question. Brand loyalty and the brand’s social media following had been built on the distinctive name and a change would be a considerable setback. A major trade mark problem also risked derailing the negotiations for the investment round. When we became involved, we carried out detailed searches of the US register to establish if there was an opportunity to challenge the US brand owner’s rights as a way of opening discussion as to a compromise.

Meanwhile, our client continued its quest and pushed into the US market without trade mark protection. Then the US brand owner with the prior mark issued a trade mark infringement suit in the US against our client. Now the issue would need to be tackled and resolved one way or another. The opponent, who had a very good and winnable case, was uncompromising. Added to that, their lawyers were working on the equivalent of a “no-win, no-fee” basis. These can be some of the hardest cases to resolve on reasonable terms because the opponent is not risking their own money and is unconstrained by the cost of proceedings. On top of that, a lawyer acting on this basis will be looking for some sort of resolution that sees them being paid, and handsomely.

We had little leverage with which to get the result our client needed. We needed to think creatively.

How we added value

We went back to our search results of the US register looking for a mark that was similar enough in terms of the name and the categories it covered to give our client a real chance of a favourable outcome. We decided that if we could acquire such a mark that predated the US owners blocking trade mark, we were in with a fighting chance. The client told us this was so important to the business that it would be prepared to spend USD 100,000 to ‘buy the opportunity’.

Through our work, we identified a mark that was not in use and close enough. Now for the tricky part.

We had to track down the current owners and secure the mark for the best price. The first approach had to be one that was most likely to work bearing the profile of the owners. In this case, we needed to avoid anything too corporate or formal and an approach was made through private investigators in the US. After some nail-biting toing and froing including the signing of the bare minimum but essential paperwork, the mark was secured for USD $5,000. We were now in with a shot.

While the US owner of the blocking mark continued with the action and kept up the pressure the case was eventually resolved by mediation before a full trial. Without the purchase of the earlier mark, we may well not have been able to achieve this. Our client continues to trade and expand their business in the all-important US market.

In addition, the funding round was completed and the business is going from strength to strength.

Why you need Briffa

We will do our best to achieve the result you need. In this case, we were assisted by our contacts in the US to buy the prior mark and run the court action and it is not unusual for us to call on our international network to do what is needed. Where other lawyers may see a brick wall, we may see opportunity.

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