Maximising your mark – Experiences of a UK retailer

There is an inherent value in a company’s intellectual property that is easy to overlook.

For example, spending years cultivating a brand can really pay off, which is why companies should use registered trade marks to monetise this goodwill.

iLaw has acted for a UK independent retailer that traded under a recognisable name for which it held the UK-registered trade mark.

Unfortunately, a large US business operating under the same mark was seeking to expand into the UK and the retailer was concerned that the US entity was causing confusion in the marketplace.

Working with iLaw on a contingent (‘no win no fee’) basis, they were able to quickly identify the client’s objectives. Together with iLaw they explored an alternative to time consuming and costly litigation, namely selling their mark to the US company.

iLaw was able to leverage the scale of the potential claim for trade mark infringement against the opponent to secure a negotiated settlement involving the assignment of the registered trade mark to the opponent in return for a substantial sum.

The retailer was able to use this money to expand its business under a new brand.

Mark Culbert, Managing Partner of iLaw and a specialist IP solicitor, said: “When entering into a trade mark dispute it is essential for a business to consider not only what it might win at Court, but also what other commercial deals might be available”.

“In this case, the smaller UK retailer quickly recognised that there was more to gain from selling its mark in return for a substantial sum than engaging in a lengthy High Court claim”.

Mark said that in all cases infringements needed to be handled promptly so that action could be sought before a brand could be irreparably damaged.

“We deal with a wide variety of infringements every year and no two cases are ever the same,” said Mark. “It is essential that businesses seek professional assistance sooner rather than later once they have identified a potential threat to their brand so that decisive action can be taken if no deal is possible.”

If you would like help or advice with any issues relating to intellectual property matters, please contact us.