Trademarks - it's good to talk

Negotiating is one of the first – and most important – steps that should be taken to resolve a trademark dispute. Sanjay Raphael, Chartered Trademark Attorney at Stephens Scown, explains how this approach helped one of his brewery clients.

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Sanjay Raphael is a Chartered Trademark Attorney in the intellectual property and IT team at Stephens Scown. The team is one of the largest specialist teams in the country and has particular expertise in advising food and drink clients.

Our client, US brewery Clipper City Brewing Co. (CCBC), wanted to expand into the UK and EU markets. To do so, it sought to file a UK and EU trade mark application for the sign “Loose Cannon” for one of its beers.

After we filed the applications on our client’s behalf, we were contacted by Loose Cannon Brewing Co, setting out concerns about CCBC’s trade mark applications and issuing proceedings. Both parties agreed to negotiate a settlement between themselves and we provided CCBC with support, including advice on what they should do to keep the discussions privileged in the event negotiations failed.

After the terms of the settlement were agreed, we helped to negotiate the contract and ensured that the terms of settlement were not detrimental to our client.

The fact that both parties in this situation were willing to talk and find a way to resolve the dispute was crucial. The outcome was that our client achieved what they set out to do, which was to sell its products in the UK and EU without recourse to legal proceedings.

If you find yourself on either side of a similar dispute, here are some tips that may help you:

• Seek advice from a specialist Trademark Attorney or solicitor as early as possible;

• Be clear about what you want to achieve;

• Consider the things that you may be willing to compromise on;

• Be prepared to spend time to reach a conclusion. It will almost always be more cost effective to negotiate than to litigate.

For further information: www.stephens-scown.co.uk