02 August, 2019
//= $blog_info['date_added']; ?>
Trademark disputes between companies arise from intellectual property (IP) rights infringement by the other party. When a company or brand owns a registered trademark, that means that they have exclusive rights to use their mark in trade. When you apply for a trademark for your brand from the the authority for registering trademarks (in case of India, The Controller General of Patents and Designs and Trade Marks under the Trademarks Act of 1999) and obtain it, you can sue anyone else who tries to use the same name for identical or similar purposes.
Trademark infringement happens when
Each country operates according to its own trademark laws. There will definitely be a difference between each country although the process is similar with regards to trademarks at the international level. Some trademark disputes that might occur during the registration stage are:
When your brand faces a trademark dispute, how does resolution happen?
The common process to start a trademark infringement case is to send a cease and desist letter. The best way is to consult with and let your lawyer draft this.
On the other hand, if you receive such a letter, you should take advice from your lawyer as soon as possible as it may raise complications for you and your business later on which may not be immediately obvious.
Sometimes you can also succeed at winning a trademark infringement case if you can prove that your opponents trademark should not have been registered.
There are many alternative dispute resolutions for different trademark infringement cases including arbitration, mediation and so on. But the most important thing to do whether you are on the attacking side or defending side is to immediately engage your lawyer and look for the best possible way of resolution.
Let us look at some famous trademark disputes that have led to rebrands:
Wrestling company Titan Sports changed their name to World Wrestling Federation and invited a huge legal fight from another WWF, the World Wildlife Fund which lasted 13 years! The latter took action to protect its brand image from what it called ‘unsavoury’ association to wrestling and in 2001, they won their case. The World Wrestling Federation did challenge this further, were dismissed, and still threatened to appeal. Ultimately, they gave in and rebranded themselves to World Wrestling Entertainment – WWE (while spending millions in the process!). Looks like the panda bear triumphed the wrestlers!
Zara is a well-known fashion brand but was also the name of a restaurant which operated in a single city in India. When the case went to the Delhi High Court, they ruled in the fashion brands favour, stating that consumers could get confused wondering whether the brand had started a restaurant. This was because even though the Zara fashion brand opened its first store in India in 2010, it still had a presence in the country through a joint venture since 1986 and had even applied for a few trademarks. So now, the restaurant has rebranded itself and goes by the name ‘The Tapas Bar’.
Seattle-based Starbucks dragged the Indian-grown Sardarbuksh to court for operating a brand name which sounds very similar to its own. Last August, the Delhi High Court ruled in favour of Starbucks (obviously!) and around 30 stores of Sardarbuksh rebranded to Sardarji-Bakhsh. However, this case may be still ongoing as the founders of Sardarji-Bakhsh are gearing up to appeal the decision.
In 2013, Microsoft’s cloud storage service ‘SkyDrive’ faced opposition from the British Sky Broadcasting Group (BSkyB) which claimed that the name infringed on its own trademark. The company, one of the largest pay-TV providers in Europe, offers online streaming, mobile apps, and even had its own online storage service called “Sky Store & Share” from 2008 to 2011. The court ruled in their favour and ultimately, Microsoft rebranded its cloud storage service to ‘OneDrive’ in the following year.
In 2012, the UK supermarket chain launched a legal case against a local corner shop in the Newcastle area called ‘Singhbury’s’, operated by Jel Singh Nagra. Rather than facing the wrath of such a big brand, Jel rebranded his store the following year to ‘Morrisinghs’ which again sounded very similar to the supermarket chain Morrisons. Luckily for him, Morrisons saw the humour in the situation and decided that the tiny corner shop could do no harm to their customer base. They even tweeted, "Mr Nagra and his customers obviously have good taste so we wish him well”!
At WinnerBrands, we help navigate for the right brand name solution by marrying legality and creativity. Check out our work on our website and book your consultation with us.