Overcoming IP envy
Have you ever come up with the perfect name for your product or service, only to see that the domain name and trade mark have already been registered? What’s worse it’s been registered by different people in different parts of the world, and they don’t seem to be using it much, if at all. The frustration at having to change a perfect name to something else is annoying, and could, in the end, lead to a loss of sales if the initial market placement has not been what was wanted. Rather than going through the process of creating another possible brand—a process that may cost money and still lead to a less-than-perfect name—there is an alternative: overcome your IP envy with eccora’s third party IP acquisition service.
Third party acquisitions, with the purchase done by a small unknown company can reduce purchase costs significantly. Often the intellectual property rights can be obtained for less cost than filing opposition or cancellation proceedings, and are easier and quicker to complete than litigation or UDRP claims. Using a third party also ensures a level of commercial secrecy, allowing for the safeguarding of marketing plans and brand protection in advance of product and brand launches.
eccora offers an acquisition service to anonymously secure trade marks, domain names or other Intellectual Property assets – and it does so internationally. As part of our end-to-end service we will discreetly approach the holder through one of our trading entities and negotiate to secure the asset at the best possible price and using a secure payment process. We work with your IP attorneys to ensure the transfer paperwork is done to the standard you need.
Note for IP professionals: the acquisition process can also be used to acquire marks that can provide prior rights for a client’s challenged mark, negating opposition or cancellation proceedings.
Our network of trading companies can also be used on behalf of IP professionals as vehicles to register new IP rights, or to oppose marks on the grounds on non-use.
Like everyone else, we at eccora are getting used to the ‘new normal’ way of working. Much of our work continues as before, such as desk-based investigations and telephone approaches. Other work – test purchases from online sources or the use of our facilities to file third party marks – also continue. There may be delays if subject companies are completely shut, but we are using all available means of contact with target companies to ensure we can close the investigations in a timely fashion.
Some types of work are not possible. Until further notice we will not be able to make face-to-face visits to subjects or attend trade fairs or outlets.
International work continues and we have assets in numerous jurisdictions able to assist. Depending on the local restrictions in place, they may be able to undertake visits as part of the investigation.
With our best wishes to you, your family and colleagues – and please stay safe!
eccora is operating as normal during these rapidly-evolving and testing situations. We have a robust business continuity plan in operation and our team is working from separate locations.
All our desk-based work continues undisturbed. Some other types of work—such as face-to-face meetings with subjects or attendance at trade fairs—will be determined on a case-by-case basis, depending on the official information and advice given by the relevant authorities. Please stay safe!
Since establishing eccora in 2010 and after 10 years at the helm, it’s now time for me to step aside and hand over the day-to-day running of the company to Gavin Hyde-Blake, our current Director, Operations. I will remain connected to eccora as non-executive Chairman.
From 1 February Gavin will be the new Managing Director of eccora and I wish him every success in his new role. I know that he and rest of the eccora team will continue to provide first class investigation, research and acquisition services to you, our valued clients. You can reach Gavin at firstname.lastname@example.org.
As some of you already know, I have been putting more roots down in Norway and for the past three years I have been acting as a part-time consultant to Actio IP AS, a Norwegian IP administrative services company. I have now accepted a permanent position as Partner and Client Relations Manager with the company. This is an exciting role and I look forward to continue working in the IP profession. I will no doubt still see many of you during future IP events.
With best wishes,
Supermac’s recent successful revocation of McDonald’s EUTM registration No. 62638 for BIG MAC on the grounds of non-use* should be a stark reminder to trade mark owners of the importance of submitting robust evidence of genuine use of their mark, whether defending a non-use revocation action or submitting proof of use of an earlier right.
In support of their EUTM 62638, McDonald’s submitted three affidavits signed by representatives of McDonald’s companies claiming significant sales figures during the relevant period, together with examples of packaging, promotional brochures and menus, prints of advertising posters and website pages bearing the mark BIG MAC, as well as an extract from Wikipedia on the BIG MAC brand. Assessing the probative value of the affidavits in conjunction with the additional evidence of use submitted, the Cancellation Division concluded that McDonald’s’ evidence was insufficient to prove that the mark BIG MAC had been put to genuine use in the EU in respect of the relevant goods and services during the relevant period of time.
When collating evidence of genuine use for submission before the EUIPO, it is vital to demonstrate the place, time and extent of use of the mark in question. Where a trade mark owner is unable to produce well documented records of their trade mark use or where such records are thin on the ground, eccora’s experienced investigators are well placed to assist. Using our extensive research and investigation processes, we are able to provide robust bundles of evidence, including evidence from independent third party sources, to support claims of genuine use. Equally, should a trade mark owner seek assistance in gathering evidence of non-use of a registered trade mark (in support of a revocation action) or evidence of acquired distinctiveness of a mark, eccora has the extensive skills and resources to facilitate this.
Our full range of services can be found at here.
* EUIPO Cancellation Division Decision No. 14788C Supermac’s (Holdings) Ltd v McDonald’s International Property Company, Ltd
We are delighted to announce that Cara Baldwin has joined us as an IP investigator. Cara has a background as a UK, European and Irish Trade Mark Attorney with over 18 years’ experience in private practice working for top tier London IP firms. Cara has always been drawn to the investigative side of IP and has enjoyed, in particular, conducting trade mark use research. Together with her knowledge and experience of IP, Cara is also a keen linguist and with this brings further strength to our investigation team. Cara can be contacted at email@example.com
We are delighted to be exhibiting at the forthcoming CITMA Spring Conference being held between 21-23 March at County Hall, London. The conference – IP in a global economy – will tackle issues close to our heart with delegates hearing talks on counterfeiting challenges around the globe and debating this international problem. This is the 4th consecutive year we’ve pitched our stand and we are looking forward to catching up with existing clients and seeing some new faces. Come and talk to us to understand how we help brand owners tackle counterfeit issues or just for a quick chat about how our investigation reports allow for clear and informed decisions when looking to establish, develop, secure and protect trade mark and IP portfolios. Details of the event can be found here @CITMAuk
You can now also send us instructions or obtain a cost estimate via our website.
This provides flexibility and allows you to get investigations quickly underway via your PC, smartphone or tablet.
Available for our core services: Trade mark in use investigation, Common law search, Domain name investigation, Company name profile
Just visit http://www.eccora.com/instruct-us/