A few years ago, in the run up to Christmas a client brought a problem to me.  My client was quite well known for producing party food (“nibbles”) and drinks packaged in novelty containers. The previous year he had offered these to a large chain of stores where they had been well received but when he offered this year’s products these had been declined. He then learned that a substantially similar range of products offered by a UK based competitor was to be bought and marketed instead.  His sources told him the only difference appeared to be price. The names were the same or very similar as was the packaging which created the same overall impression as my client’s packaging.

Unfortunately my client had no registered trade mark in the UK, but the packaging had been designed specifically for him in-house and his product had been on sale for less than a year. This may have made a strong claim to passing off more difficult but we did turn these potential deficiencies to our advantage. First step was to establish rights in the name or trade mark. Rights in a trade mark can be established by using the trade mark (the so-called action for passing off) or by registration.  The first applicant to register a trade mark in good faith is deemed entitled to it. The trade mark had been devised by my client and used by him for several months, therefore he was entitled to register it and to prevent any third party from using it. So, we filed applications to register those variations on my client’s product name that he had used as trade marks.

The second step was to establish rights in my client’s packaging. Although the product had been sold in the UK it had first been shown (or as the law says “made available to the public”) less than 12 months previously. Speed was of the very essence. Applications to register the designs of the packaging had to be put together and on file before the first anniversary, but we did it. The designs were registered as Community Design Registrations (now EU Design Registrations).

Having got the trade marks and designs protected by registration we were in a position to tackle the competitor who had stolen the client’s IP and undercut him. I then drafted a letter of claim setting out my client’s rights to (a) registered trade mark (b) protectable goodwill in the name and the get-up of the packaging, (c) the registered Community Design Rights and (d) the unregistered Community Design Rights in the packaging. I was also able to show that the competitor was aware of my client, and of the product marketed by in the packaging concerned. This meant we could produce good evidence that the competitor was in a position to have copied (and we claimed, did in fact copy) the packaging in which the client had unregistered design rights.

The client was entitled and in a good position to apply to the Court in the United Kingdom for an order restraining the competitor from infringing the registered Trade Marks and the Community Design Registration, and the unregistered Community Design Right as discussed above. Significantly my client was entitled to Summary Judgment in respect of the United Kingdom Trade Mark I had registered. Having regard to the fact that the infringing products would be available only during the Christmas period, there was a pressing need to proceed with an Application for Summary Judgment supported, as necessary, by an Application for an Interim Injunction to prevent continued sales of the infringing product pending trial. The matter settled shortly thereafter.

My client was fortunate in the circumstance surrounding this case. Although the product had been marketed, it had been made available to the public (i.e. had been published) less than 12 months previously so we could get the design registered. Equally important, we could make use of the “fast track” provisions offered by the UK IPO to achieve speedy trade mark registration and tailor the application to ensure adequate protection while minimising the risk of delay to the application. Matters could have been otherwise, and the client could have lost an immediate commercial contract and long term IP rights. The moral of my cautionary Christmas tale, therefore is to ensure that you routinely review your IP rights, and make sure those rights are completely up to date.

Eric Ramage is a Fellow of The Chartered Institute of Trade Mark Attorneys, and has a Higher Courts Litigation Certificate from the Intellectual Property Regulation Board. He has substantial experience of design rights and for many years was the Examination Board member responsible for the design and copyright examinations for entry on to the register of patent attorneys and the register of trade mark attorneys.  He has lectured and tutored on design rights for many years.

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