UK Distributor Fights Back - Tacitcal Trademark Registration

Facts: We acted for a business-minded doctor who wanted to import an innovative sports product from the United States not previously on sale in the UK. He had spent a lot of time and money researching the UK market and had approached the US manufacturer to seek appointment as their excusive UK distributor. The US supplier had send emails confirming that he was the exclusive distributor and he therefore spent a further £30,000 developing a website as a platform for the sale of the products in the UK. The US supplier then refused to supply our client and had appointed another UK exclusive distributor instead. Our client was not in a strong legal position because no formal distribution agreement had ever been signed. We had carried out a trademark search and discovered that the US supplier had not protected their brand as a UK registered trademark. Needless to say, our client was quick to apply for trademark registration. Although, an overseas supplier can take action to recover a trademark following registration by a distributor, the US supplier was reluctant to do so since our client would have brought a legal claim in damages for terminating their agreement to appoint his as the UK exclusive distributor. Instead, we were able to negotiate a sale back to the US supplier of their trademark in the UK for a sum of £80,000 which enabled our client to recover his lost investment and make enough on top to start a completely new venture.