A RECORD COLLECTION: Trademark Strategy, Ex Parte Injunction and Settlement
- Gary Gartland
- May 14
- 3 min read
Updated: Jun 1
Trademark Strategy, Ex Parte Injunction and Settlement
When a longstanding (but simple) brand name was infringed by a former employee, careful record-keeping allowed us to respond quickly and effectively, with strategic trademark filings and an ex parte injunction.
Brand Confusion Close to Home
A long-standing business faced a serious challenge when a former employee set up a competing business using key elements of its name. There was genuine confusion in the market: whose business was whose? Our client believed the former employee was breaching his obligations.
We needed to deal with this urgently.
The Challenge:
Not A Great Name, but a Good Brand
The brand name wasn’t creative or distinctive, but it had been used for many years and it had earned trust in the market.
The former employee refused to stop his confusing business activities. He argued he was using commonplace words, even if they were prominent in our client’s brand, and claimed that this was fair use.
Strategic Steps:
A Valuable Record Trail
Unusually, our client had kept excellent records over many years. Crucial with this simple type of name.
As part of our trademark strategy we gathered copies of advertisements and evidence of consumer trade show appearances going back almost 20 years, as well as recent online use and customer reviews: evidence that our client’s name was used as a brand and recognised by consumers as a brand in the market.
We moved quickly to file trade mark applications and were able to present strong evidence to the Intellectual Property Office of Ireland that the trade mark had acquired distinctiveness through use.
Moving Fast with an Injunction
The former employee continued his activities, so we also issued High Court proceedings for an Injunction. We began with an ex parte application – a one-sided request - for an Interim Injunction for a short period.
With a specialist team and persuasive evidence thanks to our client’s records, the judge had no hesitation in granting the Injunction.
After it was served, the former employee made some changes, but not enough. We returned to court prepared to seek a full Injunction pending trial. This stage is often decisive. The legal test is similar to what would be used at trial to make a final decision.
Many cases are resolved by negotiation during the injunction processes. This is why the injunction route can be much faster and more effective than ordinary court proceedings.
The Outcome of our Trademark Strategy:
A Settlement, A Secure Brand & Registered Rights
We negotiated a full and final settlement, securing our client’s name as a brand and protecting its business. We also registered trademarks for its logo and word mark. There was significant evidence of acquired distinctiveness.
Our client continues to thrive, and the experience has underlined the importance of its brand and having expert IP advice from the start.
If you take anything from this client story, please take this:
Even a simple or descriptive name can be protected, with the right strategy and supporting documents. It also demonstrates the challenges of descriptive and non-distinctive names, even when you have longstanding use in commerce. Even people close to you may think they can take advantage.
If you are concerned about IP infringement, want to strengthen your trademark protection or need urgent legal advice, TMR Fitzsimons can help you. Call us now on +353 41 984 3534 or use our contact form here.
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Email: reception@tmrfitzsimons.ie
Web: www.tmrfitzsimons.ie
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