Trademark Infringement?

[monster12]

I have been using a fantastic name to describe my natural product which has identified a niche in the market, and which is proving rather popular here in the UK. I applied for the text-based name/logo to be trademarked in the UK on 6th June 2014. The registration came through on 19th September 2014.

There is a US-based company which it turns out uses two of the words in my text-based logo to describe their product also, and they are claiming that they have a world-wide trademark on these two words. My search has revealed that their EU trademark was also, bizarrely, applied for on exactly the same date as mine, 6th June 2014. Their registration date however came in a little later than mine at 20th October 2014. Their trade mark type is 'figurative' as is mine. Their logo looks nothing like mine. Our products, although they share the same category, Cosmetics, and a specific type of cosmetic, look and are packaged entirely differently - mine is retro-looking, in recyclable zero-waste packaging, theirs is modern and contemporary in plastic packaging.

They have written to me today saying that they have world-wide rights over the words in my product name (which I believe they can't have because they are generic words), and that they assume as mine is entirely natural it has a limited shelf-life and therefore want me to stop using the words on my product after 60 days. My product is made in small batches for freshness, but it does have a three year shelf-life, and I am just about to step-up production to meet the demand in the UK, so there will be stock. I also have a considerable number of retailers now stocking it, as well as it being online, and it's the top result on Amazon.co.uk for its category.

I have simply responded to them asking them to confirm the registration details of their trade mark which is relevant to the UK, I haven't made any promises.

I think as we both applied for our registrations on exactly the same day on two different continents this is an extraordinary case of 'great minds think alike'! Who is protected in the UK market here, me or them?!

Does anyone have any advice? I am not looking at selling my product outside of the UK, I'm happy sticking to the UK market. Any advice would be most welcome.

 

[ethical PR]

There are a few regular trademark lawyers on here, it might be worth contacting them for an initial consultation.

I didn't know you could apply for world-wide rights when it comes to trademarking - I thought it was area specific.

Have you seen anything which demonstrates what trade mark rights they have which relates to the UK?

 

[monster12]

HI thank you ethical PR for getting back to me, I'm looking for a local Trademark attorney in the hope that I can get the appointment soon.
Yes, I have found their trademark registered on the IPO website, which is one issued by EUIPO, the European Trade Mark Office. This is the one that they applied for on exactly the same day that I applied for mine in the UK - 6th June 2014.

 

[F_B]

Who is protected in the UK market here, me or them?!

- Both of you equally! Provided neither application claims priority to an earlier registration then you both equally enjoy respective rights.

They may have an international trade mark application which allows them to extend protection into different states as and when they require, however, if those applications are made more than 6 months after the filing date of the first application (the international application will be based on a national first filing), then they will not be able to claim the earlier filing date. This is important as if you're mark was filed first, then you have the right.

I would need to look at both of the registrations to be able to tell you where you stand. As a worst case scenario the EU mark claims priority to an earlier mark and would therefore be enforceable against your earlier mark (noting I've not having discussed the marks yet).

Regarding the marks, you say the words are generic, do you mean descriptive or simply that they may be found in the dictionary? If the marks are descriptive (e.g. Apple to describe a fruit) but registered in a stylised form, the protection afforded will be narrow, i.e. to the presentation of the descriptive word in that form. If this is the case their registration may not be enforceable against you as it only protects the styling of the word for the goods/services and your styling is quite different -no risk of confusion.

If the word is generic, but not descriptive (e.g. Tap for fruit), then the scope of protection is likely to be broader. The fact both marks are registered in stylised form will limit their respective scopes.

It may be possible to seek a coexistence agreement where you effectively agree to create market separation by some means such as representing the marks differently.

 

[monster12]

Thank you FrazerBye for such a quick and comprehensive response. Their national (US) first filing appears to have been made on 21st Feb '13. This is just less than a year and a half before filing for the EU trademark, so well over 6 months. And this is for the two words of their brand which are essentially the combination of noun-noun, mine is the combination of a noun-adjective-noun... so for example where theirs says 'DOG COLLAR' mine is 'Dog All-Leather Collar' - the letter case here is significant as they have filed all capitals, I have capitalised each word. Their stylised logos are also all capitalised, mine are not. It appears that only their US trademark filed in '13 claims words only, no logo, but where the mark is 'DOG COLLAR', they disclaim 'COLLAR'...

 

[The Byre]

https://www.energydrinkslawsuit.com/monster-energy-worlds-biggest-bully/

 

[F_B]

If you pm me I would be happy to take a closer look. This does depend on the goods, if you are selling dog collars and the marks are as you describe above any registration is likely to be narrow.

Something doesn't add up as the base registration needs to be the same as the international registration -one cannot be a word and the other a logo, they should be the same.

@The Byre -have you run into the Smiley Face Company yet? See the legal section here: https://en.wikipedia.org/wiki/Smiley Not as big as Monster but they really go for anyone who cracks one of their smiles.

 

[ConnietheCoton]

And I thought that I had problems!
There was mention of a coexistence agreement, earlier in this thread, but how specifically is that negotiated?

 

[F_B]

Co-existence agreements can be negotiated at anytime. The UK courts are encouraging the public to reach amicable settlements outside of court where possible and there is a push for alternative solutions to court action such as mediation and arbitration.

In trade mark cases, I normally find that the other side file a notice of intended opposition (form TM7a), this extends the opposition deadline (for the interested party alone) to 3 months instead of two.

There is normally a request from the other side for the trade mark applicant to withdraw the mark, followed by a bit of to-and-fro and if possible, an agreement made prior to a formal opposition being launched.

 

[The Byre]

@The Byre -have you run into the Smiley Face Company yet? See the legal section here: https://en.wikipedia.org/wiki/Smiley Not as big as Monster but they really go for anyone who cracks one of their smiles.

This kind of business practice seems to have turned into an industry!

An acquaintance of mine was pitching a movie and the usual package of show-reel, tag-line and treatment was doing the rounds. There are ten basic genres in the movie biz, one of which is 'Monster-in-the-House', so under 'Genre' he put down exactly that.

Monster Cable's lawyers wrote to him a letter with the title 'Letter of Concern', stating that any use of the word 'Monster' could result in 'action' - as that great philosopher and poet Dizzy Rascal said "Bonkers!"

But the beagles at Monster were showing early signs of rabies about 15 years ago. Amongst those threatened with lawsuits: the TV show Monster Garage, a clothing store called MonsterVintage, Disney for the movie Monsters, Inc., the Chicago Bears for having the nickname "Monsters of the Midway," and the Boston Red Sox for offering "Monster seats" on top of their "Green Monster" wall. Then the beagles went totally foam-at-the-mouth rabid and took on the might of Apple over 'Beats' headphones and lost.

The problem with Monster (and some other) brands is that they have taken the principle of having to show that they are defending their brands to silly and pointless extremes. By 2005, they had nearly 50 'Monster' related brand names such as I Am A Monster, Monster Attitude, Monster Design, Monster Sport and so on and on and on . . .

There's a lesson in there for all of us - it's just that I'm not too sure what that lesson is!