Patent wars extend into brand protection.
Businesses with registered trademarks can try to prevent other companies from registering a conflicting, or similar sounding, mark by lodging a formal challenge to the IPO – and several high-profile international businesses have recently been successful in fending off rivals.
Luxury fashion designer Giorgio Armani attempted to stop the registration of the trademark “Benjamin Armani”, by a retailer of baby buggies, cribs, high chairs, and children’s car seats.
Syco Entertainment, Simon Cowell’s TV production company and owner of the X-Factor reality television show, also challenged a trademark application made by jewellery retailer, SGI Jewellery for the registration of the trademark “Little Mix” – the name of one of show’s winning acts.
In sport, Chelsea Football Club was challenged by menswear retailer Chelsea Man for the use of the trademark Chelsea for its sports-clothing apparel.
Similarly, Kathmandu, which sells travel and adventure clothing, attempted to protect its Live the Dream trademark after English footballer Rio Ferdinand sought to trademark the phrase, “Rio Ferdinand Live the Dream Foundation”.
The rise in the number of trademark challenges has also been driven by an increase in the number of applications being filed, as businesses invest more in intellectual property as the economy picks up.
The number of trademark applications in the UK has increased by almost a fifth in the past year to 41,600.
“While there has been a lot of focus on the patent wars, businesses are becoming increasingly robust in the defence of their trademarks,” said Jeremy Drew, a partner and head of the IP and technology group at City law firm RPC. “Considering the value placed on brand names it is not surprising that businesses will try a pre-emptive strike against challenger trademarks at the earliest opportunity.”
One of the advantages of challenging a trademark application is that it can deter rivals at an early stage, when they are less likely to be wedded to that particular brand name, Mr Drew added.