How safe is your brand?

We recently assisted a business owner who, after a year of humble beginnings was gaining traction in the market and starting to build good momentum.  Things were looking great!

Then, out of the blue, our business owner was faced with a “Cease and Desist” demand issued by a competitor. 

What is a “Cease and Desist” Demand?

In its simplest terms, Cease and Desist demands request an individual or entity to “cease” acting in a way that they are currently, and “desist” from so acting in the future.

Why was it issued in this case?

The competitor in question incorporated its company one year prior to our business owner, and was operating under a substantially similar brand.  Both companies were validly incorporated using similar brands with the Companies Office.

So in this situation our business owner would be protected by its company incorporation…right?

Wrong! The Companies Office does not undertake marketplace or trade mark searches when deciding whether to reserve a company name. 

Further, they have lower thresholds of “similarity” than trade mark law.  For example, JOHNNY ENGLISH LTD and JOHNNY ENGLISH 2018 LTD would be allowed to co-exist on the Companies Office register. 

Despite this, depending on the dates of incorporation, one would infringe the other if trade mark infringement proceedings were brought.

However, if you take steps to register your mark prior to a competitor you have a better (and less costly) opportunity to refute a Cease and Desist demand, and if appropriate issue one to your competitor instead.

Companies Office incorporation will not help you to protect your brand.  Trade Mark registration, however, can.

For further information on Trade Mark registration, please contact us.