Using mediation in Trademark disputes

Would you know the difference in origin of these products? MAGIC WHIP and MIRACLE WHIP; LUX and LUV; CRISP-N-FRI and CRISPA. What about ROMANY CREAMS and ROMANTIC DREAMS? Sounds simple? Maybe not.

Clea Rawlins
Clea Rawlins

Understanding why some of these marks are confusing while others are not is, well, confusing.

The law of trade marks is complex and requires the use of a specialized trade mark practitioner from day one. Savvy business owners will seek advice on whether to proceed with a trade mark from an attorney who specializes in trade marks. Good advice can result in developing a strong trade mark and avoiding future disputes. Some disputes are unavoidable, however.

Let’s say that you are involved in a dispute about potentially similar trade marks used on similar goods. You’ve been using your mark and it is being challenged. The outcome of the dispute will have a bearing on the success of your business.

The other side needs to hear your version of the story. They need to understand how important this mark is and you don’t want to be bullied into letting go of your mark just because the other side has more resources than you. You’ve been advised that, in order to protect your mark, you will need to reveal confidential business documents and that is not what you want. It is important that you resolve the issue quickly so that you can dedicate your time and resources to growing your business and achieving your goals. 

Is it possible to achieve an outcome that juggles the complexity of a trade mark dispute with your need to keep things private, to keep time and costs down, and to achieve a fair outcome?

It is possible with mediation.

In reality, those with the best understanding of the market are the parties themselves. You are in the best position to decide what outcome would suit your business and to come up with creative solutions to do that. Provided your case does not require an interdict or removal of trade mark rights, which necessitates litigation, mediation can be very helpful, particularly if there is an ongoing relationship (say where there’s a licence agreement). If a winner-takes-all outcome would be detrimental to your business, working with a mediator to create a mutually beneficial solution may be just what you need.

This article has been written by Clea Rawlins, an Associate in the Commercial Department of Garlicke & Bousfield Inc.

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