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Real life example ...showing the danger of not having your trade mark registered
Also see: ■ Common Misconception Regarding Trade Marks ■ Importance of Trade Mark Registration ■ Major advantages of Trade Mark Registration
A woman (let’s call her Y) had a small company selling a certain kind of clothing. She had the company name registered, and was using the name as the brand name for her clothing. However, she did not register the name as trade mark.
After trading for about five years, Y heard about another, larger company that had recently filed an application for registration of a name as a trade mark. This trade mark covered various types of clothing, including the type sold by Y’s company. The name used by this other company as a trade mark differed from that used by Y’s company by only one letter, and the two names sounded almost identical.
There was no reason to think that the larger company had copied the name intentionally, but Y was still very concerned, and rightly so. There is a strong chance that customers would believe that the clothing sold by this other company was from the same source as the clothing sold by Y’s company. If customers were looking for that brand of clothing, there a strong likelihood that they would buy the larger company’s clothing believing that it was the “original” label sold by Y’s company.
Y wanted to know what she could do, but her options were limited. She could file an opposition against the larger company’s trade mark application (as the trade mark was not yet registered). However, for certain technical reasons relating to the facts of the matter, the grounds on which she could oppose were limited, and opposition proceedings are usually costly. She could also take the matter to court to try to rely on the common law and trade practice legislation, but again, this would be costly. In addition, especially because the other company was larger with a significantly higher turnover, and had been in operation for longer, Y’s prospects for success, if she took the matter to court, would have been extremely uncertain.
What is clear is that, if Y had registered the name as a trade mark, she would have been in a far stronger position to stop the larger company from using that name. Indeed, that company would probably have found out about Y’s company’s label during a routine trade mark search and would probably then have decided not to use that name. Also, there is a high likelihood that the Trade Marks Office examiner would have objected to that company’s trade mark application if Y had filed an application to register her trade mark earlier.
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