Claire Jones (Novagraaf) published an interesting article for Lexology which presents Tesco’s approach regarding the launch of its new retail stores in the UK and what is common with the trademark strategy that the company used.
Tesco, as one of the biggest retailer in the country, decided to launch new stores that would compete directly with Lidl and Aldi under Jack’s brand.
The company desire was to keep this in a complete secrecy because of which Tesco signed non-disclosure agreements with its employees and partners.
So far so good, but what about the trademark protection that this new brand needs. If the company had filed an application in the UK or the EU this would have revealed its intentions to some extent.
To prevent this, Tesco filed for a trademark Jack’s in Sri Lanka for all classes of the Nice classification.
You may ask how this does help the company bearing in mind that the stores are in Europe?
Well according to the Paris Convention for protection of industrial property, if you file for a trademark in one Member State of the Convention and within 6 months you do this in another Member State for the same mark, your second application can use the priority date of the first one.
So in the case of Tesco they did exactly this. Of course, this by itself doesn’t mean that you will register successfully your mark because, for example, owners of earlier identical or similar marks can oppose you. Nevertheless, such a strategy can help you to hide your moves to your competitors.
The full text can be found here.