What’s in a name (or an acronym)?
This month we focus on the importance of a business protecting its intellectual property in the context of its relationship with its competitors and the market.
A recent matter that we were involved in shows the importance of carefully considering what items of intellectual property are important to a business, whether or not those items are capable of protection and carefully considering what your competitors have already done in respect of the protection of their asserted intellectual property.
In this particular matter, we acted for a business whose name, when reduced to an acronym, was identical to the acronym of a competitor’s name. While the respective businesses had relatively generic, descriptive business names, unfortunately for our client the competitor had registered the acronym as a trade mark.
One of the primary issues between the parties was whether our client’s use of the acronym as an abbreviation of its name amounted to use of the registered trademark as a sign. Our client strongly contended that the acronym was only used in the true sense of an abbreviation of its name as opposed to a mark in connection with the provision of goods and services.
While the matter was ultimately settled, for a considerable period it was a situation of intellectual property lawyers at 10 paces, resulting in significant financial and time costs being incurred by the parties.
While the situation may not have necessarily being avoided had our client conducted a trademark search before it started using the acronym (as on its case it was using the acronym solely as an abbreviation of its name as opposed to a sign in connection with the provision of goods and services) at the very least it would have brought the existence of the competitor’s trademark to its attention and allowed it to consider its options.
Intellectual property is often referred to as the forgotten asset of a business, yet in terms of establishing a value for a business is typically a business’ most important asset.
Getting your IP strategy right, including identifying, securing and protecting your businesses IP rights is becoming increasingly important to ensure the success of your business. We have years of experience in helping businesses manage their IP strategy in an efficient and cost effective manner. We specialise in providing clarity and confidence to business operators in all of their legal relationships – contact us today to discuss your legal needs or that of your clients.Back