Case 7: Trademark registration. Get it right or pay the price.

In early 2015 we had a conversation with a potential client about the need to register and protect his businesses trademark.

The client assumed that as he’d been trading for more than a decade without any problems all was well: he’d not been challenged nor was he aware of anyone in his trading area using his name. He felt ‘protected’ simply because of his trading history. However, we pointed out that a trouble-free past was no guarantee of positive protection in the future.  

Furthermore, if he wanted to expand, merge or sell the business then formal trademark registration would be a tangible and valuable asset. He took our advice and we filed for trademark registration. But our application was not quite as he had expected. Instead of registering his full trading name ‘Seasons Catering’, our advice was to secure the rights to the key word that defined his identity – ‘Seasons’. This would give our client a wider sphere of protection and greater clout if an infringement occurred.

The Challenge:

Ten months after filing the registration we received notice from the Trademarks Registry that a company, whose head office was based in India, had applied to register a UK trademark including ‘Seasons Catering’ for itself. We 
took immediate action and approached the company’s UK representatives pointing out our client’s prior registration of the name ‘Seasons’ and its use as ‘Seasons Catering’. They withdrew their application. However, the matter did not end there. Our research showed that the Indian based company had made further applications for trademarks – all included  ‘Seasons’ linked to a food related or corporate descriptor. We raised objections to all these variations because they infringed our client’s right to use ‘Seasons’ and could adversely affect our client’s reputation and status.  

The Outcome:

As a result of our robust defence of our client’s registered trademark all claims to use ‘Seasons’ in any food related association were withdrawn. A victory for our client but also a practical example of our advice to look carefully at how a trademark can be best protected.  If our client had not registered his trademark at all, it is quite possible that the cost of defending it would have been perhaps ten or twenty times the registration fee. The time involved in defending it may easily have taken a year or more. And to register only ‘Seasons Catering’ would have left the door open for others to use a similar trademark causing confusion and possible detriment to our client’s reputation and trading success.

Needless to say we were delighted by the outcome of our defence and so was Andrew Fleming, CEO of Seasons Catering – “Just brilliant Michael! Thanks for being so much on the ball.” 

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