Trademark Trouble: When Your Ex Claims More Than Just the Fur Kids

Photo by Marek Studzinski on Unsplash

At Gordian IP, we've come across our fair share of eyebrow-raising situations where someone else – often someone you know – has registered a trademark that isn’t theirs. It's more common than you might think! The truth is, these trademark mix-ups usually come from people close to the trademark owner, leading to some awkward (and sometimes heated) conversations.

CLASSIC TRADEMARK DRAMA

1. Business Partners Turned Rivals

   Business partnerships are like marriages: they work great until they don’t. When business relationships sour, one partner may attempt to claim ownership of the company's intellectual property, including trademarks. This often happens when no clear agreement on trademark ownership exists, leaving both parties in a legal struggle.

   
   

2. Ex-Spouses (Yes, it's more common than you think!)

   Ah, breakups. They come with all kinds of baggage, and sometimes, that includes a trademark dispute! Believe it or not, it's not unusual for one spouse to try to claim the business's trademark after a split – it’s almost as common as fighting over custody of the fur kids. It worse when ex-spouses are also ex-business partners!

   
   

3. Overseas Distributors Playing It Fast and Loose

   Expanding globally? Excellent! But be careful with international distributors. Sometimes they get a little too enthusiastic and register your trademark in their own country – without asking. This can create a huge headache when you try to officially enter that market. Surprise!

   
   

4. Sibling Rivalries in the Family Business

   Sibling drama doesn’t stop at who gets to call shotgun. In family-run businesses, trademarks can become the subject of squabbles. One sibling might rush to register the family trademark, hoping to get ahead in the race for inheritance or business control.

   
   

How to Avoid a Trademark Tangle

These situations might make for entertaining stories, but you don’t want to find yourself in one! Here are some tips to keep your trademarks safe and avoid future headaches:-

1. Put It in Writing, Early On

   Whether it’s a business partner, spouse, or family member, it’s important to have a clear, written agreement about who owns the trademark. Don’t wait until things go wrong. Formalize ownership from the start, and be sure to include what happens if someone leaves the business or if (heaven forbid) a relationship falls apart.

   
   

2. Register the Trademark in Your Name

   It sounds obvious, but make sure the trademark is officially registered in the name of the rightful owner – whether that’s you or the business. Don’t let someone else handle the application unless you’ve got complete trust and a clear agreement. If your name is on the trademark, it’s much harder for someone to take it from you later on.

   
   

3. Think International – Register Globally

   Planning to expand overseas? Register your trademark in those markets ahead of time. This stops overseas distributors or third parties from trying to claim it as their own in foreign jurisdictions.

   
   

4. Sort Out Wills and Probate for Trademarks

   If you personally own a trademark, make sure it’s part of your will and that you’ve clearly outlined who should inherit it. Having a plan in place could avoid a real-life Succession situation when you do eventually bite the dust. Without a clear direction, your family or business partners could end up in a messy probate battle over the brand you worked so hard to build – and nobody wants that kind of drama!

   
   

5. Include IP Clauses in Contracts

   Whether you’re working with business partners, distributors, or family members, make sure your contracts explicitly state who owns the intellectual property. This is especially important when expanding internationally or dealing with multiple stakeholders. A well-written contract will prevent any misunderstanding down the line.

   
   

6. Monitor Your Trademark Regularly

   Stay proactive by regularly checking trademark databases to ensure no one else has registered your trademark. If something looks fishy, address it right away before it turns into a bigger problem.

   
   

Wrapping It Up

Trademark issues often arise when you least expect them – and they’re usually caused by someone familiar! To avoid ending up in a legal tangle, it’s important to plan ahead and follow some best practices. Whether it’s making sure the right name is on the trademark, including it in your will, or having solid contracts in place, taking these steps early will save you from future headaches.

If you ever find yourself in one of these sticky situations, don’t worry – at Gordian IP, we’ve seen it all and are ready to help you sort things out. Whether it’s ex-spouses, business partners, or family feuds, we’re here to protect what’s yours!

IP Deadlines: Don't get caught with your pants down

Ever found yourself racing to finish a project, only to realize you missed the deadline by a mile? We’ve all been there—late-night cramming, coffee-fueled sprints, and the all-too-familiar feeling of panic. While missing a deadline for your personal project might just mean a few missed marks or an extra day of work, missing deadlines in intellectual property (IP) can have far-reaching consequences.

Most intellectual properties, like trademarks, patents, and designs, have specific renewal dates. Patents require annual fees, trademarks every ten years, and designs every five years. Failing to renew can result in losing your rights, as Rebecca Dowdeswell, a Leicester salon owner found out the hard way.

Rebecca registered “nkd()” as a trademark for salon related services in 2009. However, she forgot to renew the trademark 10 years later when it was up for renewal. Having missed the grace period of 6 months for late renewal, Rebecca had no choice but to re-file her trademark in 2022, setting off a series of complications.

Her new application is being opposed by L'Oréal, citing potential consumer confusion with their "Naked" line from the Urban Decay series. Despite attempts to settle the matter amicably, the opposition is still ongoing, having cost Rebecca more than £30,000 in legal costs already.

This whole ordeal is a big wake-up call for business owners about just how important it is to stay on top of IP renewals. Keeping those deadlines in check can save you from some seriously costly legal trouble and keep your brand protected.

In Malaysia, trademarks must be renewed every ten years. If you miss the renewal deadline, there’s a six-month grace period for late renewal. But if you fail to renew your trademark within the grace period, you may still be able to request for a restoration of your trademark within 6 months of your trademark being removed for non-renewal. However, this process can be complex and costly, so it's crucial to stay on top of renewal dates. Setting reminders or working with an IP professional can help ensure your trademarks remain protected and avoid any costly surprises.

Why Trademark Applications Fail: Common Grounds for Refusal

Applying for a trademark is a crucial step in protecting your brand, but many applications hit roadblocks along the way. Understanding the common reasons for refusal can help you navigate the process more successfully. Here are the key grounds on which trademark applications often fail:

1. Too Generic, Descriptive, or Non-Distinctive

Trademarks need to be unique identifiers of your goods or services. If your mark is too generic or simply describes the product, it won't be approved. For example, trying to trademark "Fresh Bread" for a bakery will likely be rejected because it's merely descriptive. Aim for creativity and distinctiveness to ensure your trademark stands out.

2. Too Similar to an Earlier Trademark

One of the most common reasons for refusal is similarity to an existing trademark. If your mark looks or sounds too similar to a previously registered trademark, it could cause confusion among consumers. Conduct a thorough search before applying to avoid this pitfall.

3. Scandalous or Against Public Policy

Marks that are considered scandalous, offensive, or contrary to public policy are not permitted. This includes obscene language, derogatory terms, or anything that could be deemed socially unacceptable. Keep your trademark professional and respectful to avoid rejection on these grounds.

4. Deceptive

A trademark must not be misleading about the nature, quality, or origin of the goods or services. For instance, if you try to trademark "Organic Honey" for a product that isn’t organic, it would be considered deceptive and thus, rejected. Ensure your trademark accurately represents what you are offering.

5. Containing the Name, Emblem, or Flag of a Place

Using the name, emblem, or flag of a country, city, or other governmental body can lead to refusal. Such symbols are protected to prevent misuse and misrepresentation. Avoid incorporating these elements unless you have explicit permission.

6. Containing the Likeness of a Person

Using the name or likeness of a person, particularly without their consent, is another ground for refusal. This includes famous personalities and private individuals alike. Ensure you have the necessary permissions if you wish to use someone’s likeness in your trademark.

Tips for a Successful Trademark Application

1. Be Distinctive: Create a unique and memorable mark that distinguishes your goods or services.

2. Conduct a Thorough Search: Check existing trademarks to ensure yours is not too similar.

3. Avoid Descriptive Terms: Go beyond simple descriptions and generic terms.

4. Stay Professional: Avoid any scandalous or offensive content.

5. Be Honest: Ensure your trademark is not misleading or deceptive.

6. Respect Protected Symbols: Steer clear of names, emblems, or flags of places without permission.

7. Get Permissions: Secure consent when using someone’s name or likeness.

By understanding these common grounds for refusal and taking proactive steps, you can increase the chances of your trademark application being approved and securing your brand’s identity.