Friday, August 01, 2008

Weak Trade Marks can leave a sour taste

A recent case (June 2008) has highlighted why you should always assess the strength of your trade mark before enforcing your rights.

Devon County Council were sued for copyright and trade mark infringement by a local businessman. The Businessman had registered "Devonshire Flavour" as a trade mark in relation to certain foods and drinks.

DCC counterclaimed by arguing that the trade mark should not have been registered in the first place and as such was invalid. There argument was that the mark was not distinct as it described the characteristics of the goods that are being supplied under the trade mark. The judge agreed and was particularly damming saying the mark was "hopelessly invalid".

The judge also agreed with the argument that the mark was used by DCC in relation to different goods and services to those registered so that there was no use of the trade mark.

Therefore, the claimant has wasted an application fee for the trade marks and is likely to have a significant costs award against him for losing to DCC.

It shows that you have to think very carefully what mark you are going to use and which classes of goods and services it will be used for.

You may get a trade mark registered but that does not mean it gives you any rights or is enforceable.

Obviously living in Devon this case is of local interest to me and shows the breadth of registrations that a new product or business has to negotiate.

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