Moore Barlow successfully helped our client to rebut oppositions received to two trade mark applications made so that they obtained UK trade mark protection for the key elements of their goods and services in the aromatherapy/massage/physiotherapy sector.
Target Therapies provides a wide range of aromatherapy/massage/acupuncture and physiotherapy services to individuals and corporate clients in the South of England and does so from six separate locations. In addition to these services, they also actively support charities including the Young Minds Trust (the UK’s leading young persons’ mental health charity) and JDRF (a leading global charity funding type 1 diabetes research and campaigning for better treatments).
The challenge faced by Target Therapies
Target Therapies recently filed 2 UK trade mark applications for TT and Target Therapies in relation to classes 3 (oils and creams for aromatherapy use), 16 (printing matter/publications), 21 (bottles and flasks), 25 (headwear, clothing and footwear) and 44 (aromatherapy/acupuncture/massage/physiotherapy services).
Both trade mark applications were opposed by much larger organisations initially seeking their total withdrawal. The TT application was opposed by a department of the Isle of Man government which had earlier UK trade mark registration for TT in relation to the famous TT motorcycle race on that island, whilst the Target Therapies word mark was opposed by a multi-national retailer which sells a vast range of consumer goods particularly in relation to cosmetics/beauty products/toiletries. The challenge for our client (and so for us) was that it was very keen to have a registered UK brand to protect its business interests but did not want a long, drawn out legal battle.
What Moore Barlow did to help our client
In relation to the TT mark, we entered into proactive negotiations with the owner of the TT mark and were able to show that our client’s business was not in direct competition to the Isle of Man TT race and amended our trade mark application so that:
- classes 16, 21 and 25 were amended in the application so that our client could only use the TT trade mark in relation to charitable fundraising activities; and
- classes 3 and 44 were allowed to proceed as originally set out in the application.
A formal settlement agreement was signed by the parties and our client now has a valid UK trade mark for TT in relation to classes 3, 16, 21, 25 and 44. This means that our client has UK trade mark protection and was not forced to abandon its trade mark filing with the loss of all related costs.
In relation to the Target Therapies word mark, the application in relation to classes 16, 21 and 25 were more problematic as these classes directly overlapped many of the consumer goods that were marketed by the major department store opposing the application. Nonetheless, we adopted a similar, proactive approach as we did in the TT application and were able to show, by a comparison of the commercial activities of our client and those of the department store, that there was no commercial threat in allowing our client’s trade mark application in class 3 (for oils and creams) and 44 (aromatherapy and similar services) to proceed to registration. Accordingly, our trade mark application proceeded in relation to classes 3 and 44 and the department store agreed to withdraw its trade mark opposition in return for our removing classes 16, 21 and 25 from the application altogether. These classes were not seen as essential by Target Therapies to protect its interests and again they were happy to obtain a valid UK trade mark for Target Therapies in these two classes and avoid having to waste expenditure in relation to the application as a whole or become embroiled in a lengthy and expensive legal dispute.
The final outcome
As a result of our trade mark expertise and willingness to fight our client’s corner with regard to the two existing trade mark owners, we succeeded in obtaining UK trade mark registrations for both the TT and Target Therapies marks and our client’s branding and competitive position has been protected as a result.
At the same time, we demonstrated a pragmatic and speedy approach in tackling the objections raised which achieved a successful outcome with minimal cost.
As the owner of a business in the wellness sector which is looking to scale it was absolutely key that we obtained the trademarks to ensure our branding – we felt extremely at risk when the oppositions were filed but John managed the situation superbly and quickly set about engaging with all parties so that an agreement could be met and our business could continue on its growth trajectory. Without John’s intervention we would not have known how to proceed with the oppositions, hampering our growth aspirations.
Nick Claxson – Owner & Founder
We were very happy that our active intervention was successful in allowing both applications to proceed to a successful trade mark registration for Target Therapies. These cases also show that the fact that initial objections or oppositions are made does not necessarily mean that a trade mark application is doomed to fail. There is usually some way of negotiating a compromise between the applicant and existing trade mark owner to allow the application to proceed.
John Warchus – Partner
How Moore Barlow can help
Given the crowded nature of trade marks in the UK and the fact that this is only getting worse with new trade marks being registered all the time, businesses should not forget the advantages of carrying out pre-filing searches to check whether any existing trade mark owners may object to their proposed application. At the same time, even when a formal objection or opposition is raised, it is not necessarily the end of the matter and as there may always be a form of commercial workaround that will allow the application to proceed to registration.
Our expertise and experience in intellectual property and copyright law will increase the chances of such a compromise solution being found, protecting a client’s position and potentially saving in relation to legal costs.
