The importance of using experts to protect your trademarks
Bernard Whyatt, of Brand Protect, gives an example of the dangers of DIY trademarks and the importance of obtaining proper advice.
The dangers of this approach came to light in January 2012, when the Patent Court gave a decision concerning the 'Griller' trademarks owned by Mr Ghias.
He had operated a fast food franchise under the name 'Griller', and had two trademarks registered in his name for a wide range of goods and services. The first was for a device mark or logo consisting of the word 'Griller' with flame effects on either side; while the second was a device mark that included the word 'Griller' together with a flame and chicken.
He decided to sue one defendant, who ran two restaurants known as The Original Griller, a second who ran a business known as Griller King and two individuals who operated a restaurant called The Griller Hut. The defendants' three businesses were not connected.
In all these cases, Mr Ghias claimed trademark infringement of his trademarks. Unfortunately, because he had chosen to protect a mark that was too descriptive of the goods and services he sold (grilled chicken), the protection that his registered trademarks was endowed with was not extensive. As a result, Mr Ghias only managed to gain a decision in his favour against the user of The Original Griller sign, but failed in his actions for infringement against Griller King and The Griller Hut.
The reason for his success against the owner of The Original Griller was that the court heard that its owner had previously worked for Mr Ghias and the words 'the' and 'original' were much smaller than the word 'Griller', which was much more emphasised.
However, against the defendants who had used Griller King and The Griller Hut, Mr Ghias failed to prove they had infringed his trademarks. Mr Ghias' problem arose because he had registered his own trademark and ran his own case in court (a real DIY lawyer).
What you can learn from this case
- Do not choose a descriptive trademark – such as Griller if you are to offer grilled chicken. Griller is fine as a trademark for goods and services that have nothing to do with food that is grilled. Choose a distinctive sign as your trademark.
- Make sure that the specification for your trademark is drawn up by an expert. DIY specifications are fine, until you need to use them, and then they may not be 'fit for purpose'. Make sure that you have the best advice possible, as a trademark is the most important asset a franchisor can own. Have those specifications drawn up by a trademarks expert.
- Do not rely on one or two trademark registrations. If your business develops then register new marks to reflect that change. If you need to make new trademark applications, use an expert.
- If you need to go to court, then use a lawyer, in a clear case of infringement by an ex-employee, Mr Ghias only just managed to scrape a win in a case of apparent clear infringement. Use an expert to fight your case.
If Brand Protect served grilled chicken, we would probably give most of the people who bought our produce an upset stomach, as we do not specialise in running restaurants.
If you do want an expert in the law of trademarks, then choose Brand Protect. We make it our business to future-proof your franchise.
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