Trademark Registration Wars Between Competitors

Facts: We were approached by a computer retailer who had received a ‘cease-and-desist’ letter from solicitors saying that his company name was infringing their client’s name and asking for an undertaking to stop using the name forthwith. Our client had been using the name for 16 years and was aware that the competitor had been using the same name for a number of years also. There had been legal wrangling between them for some time. We immediately carried out a free trademark search for our client and discovered that the competitor had recently filed a trademark application to try and take exclusive rights in the name for himself by means of trademark registration. Fortunately, we were just in time. The opposition period at the Registry still had two days to run so we filed an immediate opposition to block the competitor from taking the exclusive rights to the name. We where then able to negotiate an agreement under which our client was paid a substantial six-figure sum on the basis that he rebranded his business which he had come to the conclusion that he wanted to do anyway for other commercial reasons. We agreed that we should hold the url in trust for a period of 12 months until our had completed the rebrand and that all enquiries from that web-site should be forwarded to our client. Obviously, this time our client instructed us to carry out proper trademark searches on his new name to ensure that it was legally available and then we filed EU applications to protect his new name by way of trademark registration throughout the EU so he will never be in the same predicament again.