8 – Trademarks & brands

Background

The international company EasyWash sells into the consumer market for cleaning materials such as soaps, washing powders, window cleaners, etc. It has major world-wide brand names. Over the last ten years it has carried out a policy of acquisition. It has now made an inventory of its trademarks and has found that it has 107 trademarks for use with the various products. For some of the products more than one trademark is used – that is one of the legacies of the companies that EasyWash has acquired. EasyWash would like to rationalise their trademarks and their product lines.

The problem

Their trademark inventory exercise reveals the following problems: In Russia, a former distributor has filed three of EasyWash’s trademarks on his own name. In Romania, a company is making identical products using trademarks of EasyWash and selling the products in the Middle East. EasyWash does not have these trademarks registered in either Romania or the Middle East countries.

In the UK, one of EasyWash’s trademarks has been refused because of an earlier identical trademark. The earlier trademark is still valid but the owner of the trademark has gone bankrupt. EasyWash has not been able to find the successor in title to the trademark – up to now.

In Turkey, a competitor has a brochure with the same pictures in it as are used in EasyWash’s Turkish brochure. A local Turkish professional photographer had been employed to take the photographs. EasyWash’s trademarks are not used.

One of the trademarks that EasyWash now owns was obtained when EasyWash acquired a company from the receiver after the company had gone bankrupt. Two other companies have now approached EasyWash demonstrating that they had license agreements on the trademark from the now bankrupt company and claiming that these agreements have survived the bankruptcy.

The challenge

• How should EasyWash rationalise its trademarks and product lines?
• What can EasyWash do about the various problems it has inherited from the companies that it has acquired?

The solution

If these are the kind of problems that you have, please contact BIRD GOËN by email (ipadmin@birdgoen.com) and refer to “case study 8” to arrange for consultation.