One interesting trademark dispute from the UK gives us some valuable insights about the UK practice and legislation subtleties when it comes to trademark invalidation.
In the case at hand Fit Kitchen Limited is the owner of the registered FIT KITCHEN trademark used for website food delivery services.
Another UK company Scratch Meals started to use the same mark for ready meals distributed to supermarkets.
A lawsuit followed. The Scratch Meals defense position was that there is no trademark infringement because the earlier mark was registered in bad faith. The argument for this was the fact that Fit Kitchen Limited applied for the mark six days before to be dissolved as a company.
Fit Kitchen Limited, however, proved that they weren’t aware of that fact because they didn’t receive the official notice for this. What’s more immediately after being informed they applied to restore the company.
Scratch Meals than claimed that in a case where a trademark was filed by a dissolved company it has to be owned by the Crown.
However, the court dismissed this claim because it wasn’t stating initially.
Finally the court considered that the earlier mark wasn’t filed in bad faith. From that point of view the mark was valid and taking into account that it was identical to the later mark, for identical and similar goods and services, there was a trademark infringement.
One strong point for this conclusion was evidence submitted by Fit Kitchen Limited for consumers who were confused between both brands in the market.
This case shows clearly how important is a preliminary trademark clearance search. The search has to be done before the relevant brand is launched in order for any legal conflicts to be avoided.
If you are interested to learn how you can conduct such searches on your own, check this Udemy course – Complete course on trademark search, for example.
Source: Simon Bennett and Scott Steinberg – Fox Williams LLP for Lexology.
INTELLECTUAL PROPERTY PLANET 