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David vs Goliath: How small companies can protect trademarks

You love the brand you have developed for your business. It’s your baby , which you have nurtured and grown, and you feel proud of what you have achieved. The brand takes off, and the business is doing well. Then you get a letter that changes everything. Your world is suddenly turned upside down as a legal representative for a multinational company contacts you to say that you have infringed their intellectual property rights.

You then find yourself in a David vs Goliath scenario and you dont know which way to turn rebranding is the last resort but you also know fighting a big company through the courts to retain your trademark won’t come cheap.

The current case of small company Mia Tui is an example of such an unexpected action: Charlotte Jamme, from Milton Keynes, set up her own handbag company Mia Tui in 2010. Jamme registered the Mia Tui logo (which included the term Mia Tui ) as a trademark in 2010. Later her company Mia Tui Limited applied to register the word trademark Mia Tui and this was later contested by German multinational travel and tourism company TUI AG on the grounds of likelihood of confusion with its mark ‘TUI’.

Whilst Mia Tui may ultimately defend against the action being brought against the company, it serves as a stark reminder to any SME that even if they register its trade mark, it is still not fully protected from legal action from third parties. In short, the Mia Tui case highlights that you cannot leave your trademark to chance, and if you are found to infringe the intellectual property rights of another party it can threaten the viability of your business.

What can you do to ensure that big boys dont come knocking at the door in the name of intellectual property infringement

1. It is essential to carry out a full trademark availability search

There is a risk that a third party may challenge the use of the trademark in the future.?Even a registered trademark does not give the proprietor the unchallengeable right to use the mark and a company may have to withdraw its new brand following complaints from third parties with prior rights. This can prove expensive and embarrassing.

2. When first thinking about a brand, do a quick trademark search on Google

Although not comprehensive, it will give you an initial impression as to whether anyone shares the same brand name as your business.

3. You can also undertake free searches by accessing available databases

This includes the UK Intellectual Property Office and the Office of Harmonisation in the Internal Market. Find out what registered trade marks there are which may conflict with your chosen trade mark.

4. It is advisable that a trademark clearance search is carried out by a qualified professional

This will cover both trademark registrations and unregistered rights the latter enable companies who have not registered a trademark to still take action against your organisation based on the common law right of passing off. The principle underlying passing off is that ‘a man is not to sell his own goods under the pretense that they are the goods of another man.’ Passing off provides more limited protection than a registered trademark but can still be used as an effective remedy. Only through such a clearance search will you be able to minimise the risk of unexpected and unwelcomed litigation regarding use of your trademark.

Roy Crozier is a partner and intellectual property lawyer with national law firm Clarke Willmott LLP.

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