Trademark Monitoring: Case Studies

The world of intellectual property rights can sometimes be difficult to get to grips with, given its intangible nature and combination of different types of rights. However, such rights can often be crucial to your business and in some cases, can be your most valuable business assets. 

One such area of importance is the monitoring of your trademarks.

The image of your business and the products and services you sell to your customers is everything. The success of your brand is not only linked to profits, but also how you deal with intangible assets, such as trademarks. Indeed, trademarks are key to securing your brand and reputation and differentiate your goods and services from those of your competitors.

At Gerrish Legal, our market research has indicated that whilst many companies focus on intellectual property in relation to their products, many who do register their trademarks consider that once registration is granted, their obligations in respect of their trademarks come to and end.

In this article, we look at why trade mark monitoring important, through the use of some real-life case studies. and what you can do to ensure your business’ name - and its future - is protected.

If you need assistance to register your trademark, don’t hesitate to get in touch with our affiliate partner here!

How to monitor your trademark?

Most IPOs have databases which show the trademarks that are registered with them (the trademark register). More on this was set out in our previous article - why monitoring your trademark is as important as registering it. However, such reports do not give guidance on the legal aspects of any infringements, and manually searching public registers can be quite time-consuming and tedious, and do not account for uses of your trademark outside of these registers, for example on app stores and retail sites such as eBay and Amazon. 

Trademark monitoring in practice: Case Studies

• Forever21

The importance of trademark monitoring can be seen with the numerous cases and claims in this area. In 2017, fast fashion turned the tables around when Forever 21 filed a lawsuit in California against luxury fashion giant Gucci surrounding the use of its registered trademarks, namely its blue-red-blue and green-red-green striped marks.

Forever 21 wanted recognition that its use of these stripes did not constitute an infringement of Gucci’s trademarks, following alleged threats from Gucci to sue Forever 21. Forever 21 asserted that such marks based on generic stripes and colour patterns are not distinctive enough, and that such combinations are used by several fashion retailers. The fast fashion company also sought to cancel around a dozen of Gucci’s design trademarks on the same grounds. Whilst the pair agreed a settlement in 2018, this example shows the importance of ensuring that your trademarks are distinct and are capable of surviving any allegations of being too generic – unless you have the funds that are available to Gucci to reach a settlement with any third parties who are contesting your trademark. Undoubtedly, Gucci’s trademarks are its most valuable assets and as such, conceding trademark registrations would never be an option for them.

• Monster Energy

Having access to billions of dollars is not a requisite for winning or settling such trademark infringement battles. The energy drinks giant Monster Energy has deployed a strategy of ‘active policing’ for years now, bringing several trademark and copyright infringement cases against numerous players, from challenging the NBA’s Toronto Raptors to suing a small healthy drinks company called Thirsty Beasts from Newbury, England. 

However, Monster Energy has lost most of these cases, with the latter claim against Thirsty Beasts being lost at the appeal stage too. However, whilst the small business was able to defend its use of the slogan “rehab the beast”, which Monster Energy claimed could be confused with their own slogan of “unleash the beast”, they had to pay a significant amount in legal fees which set their business plan back by two years. 

Therefore, when creating, using and monitoring your trademarks, there are two lessons to be learnt here: firstly, do not adopt an aggressive strategy of challenging competitors where the third party trademarks are not sufficiently said to be infringing your own trademarks, and secondly, think carefully about the trademarks that you do use and ensure that these are not similar to any that are already registered – as this could save you a lot of money in legal fees.

This is where trademark watch services and timely legal advice on the results is absolutely key to anticipate and eradicate issues at an early stage, at a lower cost.

Additionally, monitoring of trademarks can also include monitoring whether your own trademarks are actually being used, or whether competitor trademarks are actually in use, as lack of genuine use can lead to the cancellation of such trademark registrations.

• Supermac v Big Mac

This was seen when a small Irish fast food chain called Supermac successfully cancelled McDonald’s rights to the trademark “Big Mac” on the grounds that the trademark had not been genuinely used in the last five years. McDonalds rights over “Big Mac” posed a threat to Supermac’s plans of expansion in the UK and Europe. Similarly, such monitoring must be an ongoing activity as opposed to a pre-registration requirement, regardless of the size of your business.

• Bentley Clothing

An example of this is the Bentley Clothing v Bentley Motor case. At the High Court of England & Wales, a small business creating clothing under the trademark “Bentley” was able to successfully contest the use of this trademark by luxury car manufacturer Bentley Motors when they started to sell clothing and headgear. Monitoring of their trademark allowed the small company to identify such infringement and take actions at an early stage, therefore protecting their own trademarks and products.  

In summary

Ongoing monitoring of your trademarks is just as important as the initial registration - both looking at the registers of IPOs in the territories where you use your trademark, but also looking at actual use in the market. This can be a difficult task, however, when completed successfully, will protect some of your most valuable assets, regardless of the size of your company and the capital that is available to you. 

If you have any queries over your trademarks, whether registered or unregistered, or queries about monitoring your trademark portfolio, please do not hesitate to contact us!

Article by Komal Shemar @ Gerrish Legal, August 2020 / Cover photo by Hello I'm Nik 🎞 on Unsplash