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An importer of African food received an email from another importer who said they were infringing their trade mark and would have to close their business. They contacted us for help.
Our client and the sender of the email were both importing and selling different types of African food, and both brand names used the phrase AfriGold. Our client sells palm oil and Garri (a type of flour), whereas the other business was importing fruit.
After a couple of conversations with our client, we replied to the email on their behalf the same day.
When we looked into the situation, we found out that the sender of the email didn’t have a granted trade mark registration, just an application that had been accepted into the registration process.
This meant that there were 2 months left for the application to be opposed, and so we made the complainant aware that our client has been using the mark in the UK and we would be writing to the trade mark registry to make them aware of this.
In addition, it is an offence to make unjustified threats of trade mark infringement, so we pointed this out in our email.
We also advised our client to submit an application for their mark, because they hadn’t registered it even though they had been using it for years.
The other party replied to our email within half an hour and apologised.
Both trade marks have since been granted, because they were for different types of food and for distinguishable marks that were not confusingly similar.
The sender of the email didn’t understand the difference between acceptance of the application and registration, because they had filed it themselves without help from an IP lawyer.
This is another example that shows why we would always recommend getting an IP lawyer involved when you register a trade mark.
At Downing IP we are familiar with the registration process and how it works, and we will also assess and deal with any oppositions that come up during your application.
