A cautionary tale of Trademarking

Brand Protect is the last word in intellectual property protection. Through brand registration, trademarking and investigations, Brand Protect give you peace of mind as registered trademark owners. Owner Bernard Whyatt describes an international situation where Brand Protect turned disaster into triumph, clawing back thousands for one fortunate franchisor.

What in heaven's name brought you to South Africa...

Right now, I am advising a large well-known franchisor of a service trademark on a situation that has arisen in South Africa, but this scenario could have arisen anywhere in the world. The franchisor in question was approached earlier this year by an interested investor wanting to be the Master Franchisor for the brand in South Africa. As with any good franchisor, this particular business is fully aware of the importance of having a registration for a trademark in a target country. In order to sell its Master Franchise Rights to this prospective investor, the franchisor asked its former intellectual property advisors to register their brand in South Africa.

Of all the trademarks in all the world…

The delight in the conception of a new partnership soon turned sour as, to the horror of the franchisor, they were told that someone had already registered their specific brand in South Africa without permission. In haste to re-appropriate the rights, the franchisor’s former intellectual property advisors developed an exceedingly expensive strategy, which had little chance of success.

The beginning of a beautiful friendship…

The Director of the franchise at the heart of this story met with me and asked what I would do in this scenario – his legal situation was summed up by his previous advisors as being poor and the chances of improving that- according to the intellectual property advisors - were even less. Brand Protect was brought in to help and in the four weeks we have been under instruction, we have attacked the existing South African registration on the basis of it having been registered in bad faith, contrary to international treaties. We have also attacked the registration on the grounds it is contrary to the tort of passing off. We have issued proceedings against the current user of the brand in South Africa for passing off and we have made an application to register our client’s brand in that country.

Here’s looking at you…

As a result of our actions, the current user of the brand in South Africa has written to us to say that she will relinquish the registration and we are currently negotiating how much compensation will be paid to the franchisor. It is possible to pluck success from disaster, but you need to have a winning strategy and a little bit of luck. Brand Protect can provide the former competently and professionally.

We’ll always have Paris…and Tokyo and London and…

If you are thinking of franchising your brand in the UK or anywhere else in the world – even Casablanca - talk to Brand Protect free of charge and we will work with you to develop a strategy that will make sure the rights to your brand are your own, enabling you the peace of mind to concentrate on building a bigger business.