2020 has thus far proven to be an annus horribilis of biblical proportions where on any given day, reading the news is like reading a Stephen King novel replete with death, doom, gloom, and more death! However, since it’s Halloween, it would be remiss of us if we do not regale you folks with a few ghoulish tales of branding disasters taken from real life cases found deep in Gordian’s vault of horrors.
The names of the parties involved have been changed to protect the identity of the victims of these heinous crimes…
The Body Snatcher
Toil and Trouble was a lovely family-run neighbourhood restaurant that’s been around for a few years. However, their idyllic existence came crashing down one day when they were sent a Cease and Desist letter. The sender, attorneys of an international hotel chain, demanded the restaurant to immediately cease using their trademark which was very similar to the trademark of one of the hotel’s restaurants.
Even though T&T's trademark was not registered, being the first to use the trademark in Malaysia meant that they had the rights to prevent the use of their trademark (or any confusingly similar ones). However, unknown to the restaurant, the hotel had already registered the trademark a year prior, meaning the hotel is now its legal owner. The only recourse for T&T was to bring the hotel to court in order to regain ownership and use of the trademark. Unfortunately, after weighing the financial and emotional costs that would surely follow the lawsuit, they decided to simply throw in the towel and ditched their decade-old brand. They were just not ready to take on the body snatcher and their attorneys.
The Squatting Troll
Weyland Solutions is a local software company who provides business solutions to customers all over Asia. Weyland had registered their trademark in several countries not long after they started their business. However, unbeknownst to them, they had actually registered their trademark in the wrong International Class and had neglected to claim their software products in their previous registration.
After realising their mistakes, Weyland applied to register their trademark in the right Class and claiming their software products throughout Asia. Unfortunately, it is found that other businesses have already registered Weyland's trademark or a near identical trademark in several countries causing Weyland’s trademark applications to be rejected there.
Worse still, Weyland could not use their own trademark in 2 of the countries as it had been registered by squatting trolls who threatened to sue them for trademark infringement! Weyland was eventually forced to take the squatters to court to reclaim its trademark. However, even after spending close to 6 figures in legal fees, there is no guarantee that they would be successful as the 2 countries have a first-to-file rule where the first person to register the trademark will have an almost unassailable advantage in a cancellation suit. If Weyland fails to reclaim their trademark from the squatting trolls, they will have to use a different trademark in those 2 countries.
The Doppelganger
Jekyll is a 3rd generation medicinal oil maker. A few years ago other traders around him started to ride on his coattails by using trademarks that are very similar to his. This put Jekyll in a right old pickle as the customers are confused and some even started to think they are the counterfeiter!
As Jekyll did not register his family trademark, he would have to engage each of the doppelganger in a costly passing-off suit. Even if he had the means to take legal action, success was not guaranteed as much of the documentary evidence that Jekyll had of his 3rd generation business was destroyed in a flood, leaving Jekyll with nothing to prove that his business have used the trademark for decades. Sadly, Jekyll had to give up his decade old brand in order to differentiate his business from his neighbours.
We hope the bone-chilling tales above have given you something to think about. No? Then we shall leave you to ponder the lamentations of this ancient prose…
Murderous screams the silence broke,
The foulest thief and conniving rogue.
Cursed fiend and devious enchantress,
Closing in to steal your very likeness.
And though you fight to save your heart and soul,
Your stomach weakens and your bones grow cold.
Alas, you should have listened to your IP attorney,
And have your trademarks registered early.
For the Snatcher, the Troll, and the Doppelganger,
Are now free to possess, pillage, and plunder!
If you too are affected by problems that are similar to what these victims had faced, or if you would like to prevent such calamity from happening to you, you know who you gonna call!