So, you have decided what to call your company, perhaps registered your domain name and all its variants, you are up and running and the business is on track. Or is it? A practice, which first appeared in the US, is now hitting the UK. It targets small businesses and has already caused consternation among companies in Scotland, where a number of fruit juice organisations have been contacted by people demanding thousands of pounds in payment in order to allow the company to keep the name.
Jonny Oag, owner of Juiced Up, a chain of four fruit juice bars based in Edinburgh, was contacted in December by a John Blanchard, who claimed to have registered the name of his business as a trade mark. He demanded several thousand pounds in cash to lease or sell it back, saying that unless a licence fee was paid, Juiced Up would be taken to court for damages.
“I didn’t know what he was talking about at first,” said Jonny. “We are not legal experts but we have been trading under our name for several years so we couldn’t see what the problem was. But naturally we were worried.”
Juiceling in Glasgow was also targeted.
The organisation behind the demands, Never Give Up Limited, had indeed contacted the UK Intellectual Property Office to register the names of a number of juice bars which have been trading over a period of time. Many of the registrations that the company has submitted to the UK IPO are, however, only at the application stage.
Jonny Oag is in touch with the UK Intellectual Property Office over the issue. “Even if the trade mark for the name of my company belongs to me, which we understand it does as we have been trading under the name for some time, the time and inconvenience involved in sorting all this out is not helpful to a small business.”
Jackie Maguire, CEO, Coller IP Management, commented, “UK businesses do need to be on the lookout for an approach from companies claiming that they own the trade mark to their name. UK law is now that rights to a trade mark are to be obtained by registration rather than through use. If a company has not registered a trade mark for their name, then their brand is at risk. By trading under the company name over the period of time that preceded any application by another organisation, the company may have a right to use their name in the area where it is known. But this does not give the company any wider rights. It is a shame that Juiced Up did not persevere with their initial trade mark application back in 2006. It is always prudent to think about branding and trade mark protection from the outset as it is always possible for someone to apply to register the name and obtain intellectual property rights in the registered trade mark. The costs of any resultant rebranding exercise can be much more expensive that a trade mark application. We are always happy to give advice on specific cases.”