The owners of a family-run restaurant based in the centre of one of Scotland’s main cities asked if we could help with a problem. They were quite anxious, and a meeting was arranged at short notice.
They explained that they had received a letter from a lawyer on the other side of the world saying that they were infringing his client’s exclusive rights to use his registered trade mark for restaurant services. It transpired that the trade mark was indeed registered in the United Kingdom for a range of services including restaurant services. The registered mark was identical to the mark that they had been using for their restaurant in Scotland for over 5 years.
Our checks confirmed that they were infringing the registration. When asked whether they had considered carrying out any searches before adopting the name for their restaurant they said that they had checked on the Internet and had not seen anything similar. They had also registered the domain name a few years before, which included the restaurant name.
If they had consulted a trade mark attorney at the time of adopting the name, an on-line check of the United Kingdom Trade Marks Registry database would have quickly shown that the name was already taken and therefore not available. They would therefore have avoided spending 5 years building up a reputation in the name only to find that their use was infringing the registered trade mark rights of someone else.
The owner of the registration was based on the other side of the world, but he had a valid United Kingdom trade mark registration. Our new client faced the prospect of having to:
• stop using the name;
• destroy all materials, stationery, signage, menus which used the name;
• identify a new name which could be used (without infringing another trade mark);
• arrange urgent searches and seek registration of the new name;
• prepare new stationery, signage, menus;
• incur legal costs in trying to avoid court proceedings for infringement; and
• possibly pay damages to the proprietor of the registered mark.
There was, however, a happy ending. A United Kingdom trade mark registration becomes vulnerable to cancellation on grounds of non-use if it has not been used in the United Kingdom on the goods and services for which it is registered for a period of more than 5 years from the date of its registration.
An examination of the details of the trade mark registration showed that it had been entered on the Register for more than 5 years. The question was whether the mark had been used by the owner, or with his authority, in the United Kingdom since its registration.
We have trusted, and very experienced investigators and our client agreed that we should instruct them to establish, as a matter of urgency, whether the mark was, in fact, in use in the United Kingdom.
In this case, the investigator was able to establish with a reasonable degree of certainty that the mark had not in fact been used in the United Kingdom. The investigator had very cleverly managed to establish this from the owner himself – a high risk but very effective result.
This gave our client a significant bargaining chip but the question was whether the other side would be willing to discuss matters. The proposal we put, with our client’s approval, was that we had established that the mark was vulnerable to an action for revocation on grounds of non-use. Our client was, however, willing to refrain from lodging such an action provided that the owner agreed to grant a royalty-free, perpetual licence to use the mark at least in and around the city concerned, and preferably throughout Scotland.
The attorneys for the proprietor were quick to respond and they could see the value of the proposition. The use by our client which could have damaged their client’s registration if allowed to continue unchallenged would now benefit the registered proprietor because it would enable him to rebut any future action for revocation on grounds of non-use. Our client was very relieved and grateful to conclude a licence agreement with the proprietor and to have this recorded on the United Kingdom Register so as to protect its position.
It was, of course, a lucky result – the situation could have been much bleaker. Even with our very competitive charges we estimate that it probably cost three times as much as it would have cost to have registered a cleared trade mark from the outset.
The United Kingdom is a first to file jurisdiction. If you are using or proposing to use a trade mark, make sure it is available for use and register it – that is the only safe option!