GO TEAM! HANDS OFF OUR NAME: Trademark Strategy

michael09134
May 13
3 min read

Updated: May 27

Injunctions and Global Resolution

Trademark Strategy at TMR Fitzsimons — A case study from TMR Fitzsimons

When a small, innovative tech firm in Germany faced one of the biggest names in global technology, it turned to TMR Fitzsimons for support. What followed was a strategic legal campaign spanning Germany, Ireland, the United States, and the European Union.

A Big Problem in Hamburg

Our client had developed an encrypted data storage and sharing solution used by government agencies, law firms and educational institutions, amongst others, across Europe. Then a global tech giant announced the launch of a team-sharing drive under a nearly identical name. Our client’s brand visibility, credibility and market presence faced immediate and serious risk.

Initial legal steps were taken in Germany, where the client was based. A German injunction was granted. But to protect its EU-wide rights under a registered European Union trademark, a new legal front opened: an application for an EU-wide injunction, filed in Ireland, the country where the tech giant was headquartered.

Our Trademark Strategy Role

Strategic Trademark Protection in a Critical Market

TMR Fitzsimons was engaged to assess and act on our client’s options to protect its EU-wide rights and to reinforce the effectiveness of our client’s European Union Trademark in preparation for any legal proceedings.

We worked closely with the client’s German legal team to build a cross-border trademark enforcement strategy that avoided litigation in the US while protecting trademark rights across the EU.

Legal Challenges

Proving Strength in a Simple Name

The name in question wasn’t particularly creative, but it had strong recognition and goodwill in a niche market. The challenge? Proving that the mark was distinctive across the entire EU, and so, enforceable.

We anticipated that the opposing legal team would argue the name was generic and descriptive. And they did. We were prepared to prove that the trademark was used as a trademark throughout the EU and was not a merely descriptive term in any Member State.

Strategic Response

Preparing for a Hard-Fought Battle

We were ready.

We assembled evidence of use across all 28 EU member states.
We showed that the name was distinctive and actively used as a trademark across the EU.
We identified conflicting uses of similar names and got them ceased.
We analysed how the opposing product was being branded, showing that it too was being used as a trademark, not just as a descriptive term.

This groundwork proved critical at the injunction hearing in the High Court in Ireland.

Injunction Proceedings

Taking on the Tech Titans in Court

Litigating against a global tech corporation means facing vast legal resources. But we matched them, with an expert team with insight and strength of purpose.

Negotiations with the tech giant's legal team had failed. So we obtained an urgent interlocutory injunction, arguing that our client would suffer irreparable harm without immediate relief. The critical interim injunction hearing was fast-tracked.

The interim injunction hearing was a hard-fought four-day battle in the High Court. We presented evidence of the name’s distinctiveness in every EU language, we showed the similarity between the rival branding and our client's identity as already recognised by the German courts, and we argued that the German court protection was not enough for an EU-wide brand.

The other side downplayed the issue, calling the name generic and arguing that any damage could be dealt with later via compensation. They argued that they intended to appeal the German injunction decision. Their legal team highlighted the importance of the Irish court’s decision for their client’s business and robustly tested the evidence and the arguments.

A Critical Decision

And a Global Resolution

The Irish High Court issued a unique decision: the tech giant was ordered to appeal the existing German court order, as they had claimed they would. Everyone knew their chances of success in Germany were slim. The judge noted that if they delayed, he would then decide the key question.

That decision shifted the momentum. As expected, the German court upheld the injunction. Shortly after, the parties reached a global agreement. The dispute was resolved, and our client continued trading under its trusted name — secure, respected and growing.

The Takeaway

Be Ready to Stand Your Ground

When your brand is on the line, a 360o perspective, proactively addressing vulnerabilities, an insightful strategic approach and a steadfast, expert legal team make the difference. Particularly against the biggest players, they fight hard. You have to be prepared, and you have to stay standing to achieve a lasting solution.

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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