As a commercial litigator, I have to say I enjoy a good, complex
and lengthy legal battle. While most clients appreciate my passion
for my work, they don't really enjoy the price tag that comes
with a complex legal dispute. As both an IP lawyer and commercial
litigator, I use both skill sets to work with clients to develop
strong brands that are capable of not only registration, but more
importantly, enforcement. From my experience, a brand that
compromises of general or descriptive words is both difficult to
register as a trade mark and generally costs more to protect.
A perfect example is the brand "THE MAN WITH A VAN."
The brand is owned by Tim Bishop, who has both the plain words
"THE MAN WITH A VAN" and the following logo registered as
trade marks in respect of removal services.
According to Mr Bishop "the name has been a double-edged
sword. On one hand it's easy to remember. On the other hand,
its generic nature makes it too easy to steal and
Mr Bishop has incurred significant legal fees trying to stop
other companies from using the same or similar name and branding.
The Internet, and in particular Google Adwords, has made it easier
for other traders to take advantage of Mr Price's brand
reputation and goodwill. Given his brand contained a simple
expression, Mr Bishop found that other traders would "use
different plays on words, to try and get as close they could in the
title." For example, traders have used 'we have a man and
van' and 'there are two men with vans.' Mr Bishop lost
jobs to competitors and this also had an impact on his brand
While choosing a generic business name or brand name may weaken
your ability to protect your Intellectual Property, it does have a
benefit. Most people use very generic terms when conducting a
Google search. A generic brand name may improve your search ratings
and enhance your brand's online presence. Often a balance needs
to be achieved to obtain the best of both worlds.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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