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Our client, Alice Ltd, is a company that produces professional-quality audio processing equipment, commonly used by organisations like the BBC. The trade mark was first registered over 10 years ago.
A new venture capital funded start-up business developed a camera that attaches to the back of a phone, aimed at semi-professional social media creators. They filed a trade mark application for the phrase “Alice camera”, and the Trade Mark Registry spotted that there was a potential clash with the trade mark registered by Alice Ltd, which included “apparatus for recording images” in the range of goods and services that it covered.
We opposed the trade mark application on behalf of our client. The start-up company defended their position saying that the names and products weren’t similar.
However, they withdrew their application just as the hearing was approaching, which brought proceedings to a halt without a result in our client’s favour. They continued to use the name, market the camera and take advance payments for it, though. Whilst most people take the hint if their trade mark application fails in the face of a third-party objection, they didn’t.
So we filed proceedings in the Intellectual Property and Enterprise Court (IPEC). The IPEC is a specialist division of the High Court, with its own rules of procedure designed for simpler, smaller intellectual property claims. These include a cap of £50,000 on the amount of costs that can be awarded to the successful party, which is reassuring for smaller claimants as it means there is a maximum downside risk.
The start-up originally had three arguments in their defence: that they weren’t using the name Alice (they were using “Alice camera”), they were not selling to the same market as Alice Ltd, and that Alice Ltd had filed its trademark application too broadly and hence in “bad faith”, meaning that the registration was invalid. We applied to strike out the bad faith argument, which was successful.
They then brought in a further argument relating to genuine use of the trademark, because by this time the 5-year time threshold for the trademark had passed. However, they did that in the Trade Mark Registry instead of IPEC. So we forced them to withdraw that and re-file in the correct court. We then had to collect evidence of use of the trademark from the client before the court hearing.
The case was heard in the Intellectual Property and Enterprise Court, during which a witness was cross-examined for each side.
After hearing the evidence presented, the judge concluded that the range of goods set out in Alice Ltd’s registration was perfectly reasonable because there was solid use across all the relevant audio equipment products. There were also a number of products that were in the audio-visual area, and some that integrated sound recording with video and provided timing signals for the video cameras.
She also dismissed the argument that Alice Ltd’s use was not genuine, and held that their other two arguments were simply wrong.
The start-up company was ordered to pay Alice Ltd’s legal costs, which were within the required £50,000 cap. Additionally, they were ordered to remove the "Alice camera" branding from all their products and marketing materials within a couple of weeks.
As a result, the start-up company now faces significant logistical challenges - including rebranding their products, updating their website, and changing their social media presence within a short timeframe. If they had conceded earlier in the process, they would have been given more time to rebrand and make those changes.
In addition to the costs, there will also be a calculation for damages that are owed by the start-up, which will be based on the sales made under the "Alice camera" name.
This case highlights the importance of thorough trademark research and professional legal advice when launching a new product, as well as the need to seek professional legal advice when a potential trademark conflict is spotted.
We’re also really pleased that the client was able to get all their costs back, because we took the case to the specialist Intellectual Property and Enterprise Court and worked efficiently to ensure the costs incurred were all reasonable, and remained within the court’s limits.
