In the pharmaceutical and well-being sector, a strong brand reputation is crucial. This makes intellectual property disputes particularly common and often leads to legal action. While we love to celebrate our successes, it’s the setbacks that offer valuable lessons for improvement, and this case study is an important lesson for brands that are too complacent when fighting their case.
The Case of NIVALIN vs. NOVALIN
Our client NIVALIN, sought to prevent the newer brand, NOVALIN, from registering and using its trade mark in the UK due to the similarity in their names.
At the time of the dispute, NIVALIN was a well-established pharmaceutical drug brand for the treatment of nervous system diseases that operated in the EU.
NOVALIN was a newly registered trade mark for a pharmaceutical food and drink thickener in the UK that was said to be available both over-the-counter and by prescription.
Our client was concerned that the new company could tarnish their reputation and confuse consumers. So, to protect the brand, we filed a cancellation action against NOVALIN before the Intellectual Property Office (IPO) to stop the new trade mark from being registered in the UK.
Even though the names NIVALIN and NOVALIN were similar, the products they represent were considerably different. Thus, the case hinged on whether our client’s reputation was strong enough to block the use of the trade mark. So, what happened?
The Result
Due to the different nature of the products, it was found that there was no likelihood of consumers confusing the two brands. NIVALIN did not operate in the UK, making it hard to establish potential harm from NOVALIN’s use of the name in the UK market.
While NIVALIN did have a strong EU presence, the evidence provided was considered insufficient by the Hearing Officer presiding over the case. Therefore, the trade mark cancellation action was denied and NOVALIN was allowed to use its trade mark in the UK.
Looking to find out more about how to trade mark your business? Read our blog on how to trade mark your insignia and why it matters.
So, What Went Wrong?
Despite IPTogether having a clearly drawn-up schedule for evidence, there were delays in providing the necessary information, despite several requests for them ahead of the Cancellation Applicant’s deadline. This led to an extremely tight deadline to gather and submit the necessary information needed, resulting in a lack of certain evidential information which should have been readily available.
The client did not see the value in having legal representation at the hearing. This was a big mistake in our view and contributed to the outcome of the case to some extent. Having a skilled legal representative at a hearing allows you to make your impact on the Hearing Officer in person and eloquently argue your case.
Evidence Issues
The evidence presented by NIVALIN was deemed to be insufficient due to several factors:
- The lack of evidence of the use of the NIVALIN trade mark within the relevant period.
- The absence of supporting information to support the claim of a strong brand presence in the UK.
- There was no evidence of the number or type of customers NIVALIN had for its product.
- There was no evidence showing the market size for the brand’s product in the EU.
- There were no examples presented of invoices sent to customers.
Lessons Learned
This is why brands cannot afford to be complacent when defending their reputation before the IPO Tribunals. It is key that proper attention is given to the evidence being submitted to ensure you win your case.
This case highlights the importance of meticulous preparation of evidence and active participation in defending your trade mark as a business.
By taking a proactive approach, brand owners can better protect their intellectual property and ensure a favourable outcome for their brand.
If you want to find out more about your intellectual property, read our blog on what intellectual property is and why it is so important.
Full case details of the NIVALIN vs. NOVALIN case is public information which can be found here: IPO Case O/167/19.
By sharing this experience, we hope to help other brand owners navigate similar challenges successfully when faced with a trade mark dispute.
Top Ten Tips for Brand Owners During an IP Dispute
- Be proactive – provide intentional and relevant evidence within the deadlines set out by the IPO.
- Collect detailed evidence – ensure your marketing or sales team collates every piece of evidence of brand use, with dates and territories clearly indicated, including invoices.
- Monitor your digital footprint – actively record and save your online and offline marketing efforts with corresponding dates.
- Keep a record of your distributors – keep detailed records of stores and distributors in each jurisdiction where you operate.
- Store your evidence correctly – clearly decide where evidence is stored and ensure it’s accessible to all relevant Gatekeepers within your corporate organisation.
- Invest in a good database – use a reliable database to organise making it easily locatable during legal disputes. There are many great IP records databases out there to help you store your evidence and make locating it easy.
- Engage with your employees – encourage employees to take pride in the brand, ensuring no room for complacency or bad data storage.
- Invest in your talent – nurture and celebrate your employees to foster a strong connection with the brand.
- Attend hearings – always have a legal representative attend your hearings. This will ensure that your case is being adequately represented on the day.
- Learn and adapt – continuously learn from your IP experiences and adopt improvements for potential future cases.
If you are looking for expert advice and legal representation to protect your brand from copycats, then get in touch with our team of highly skilled trade mark lawyers now or call us at +44 (0)330 1339847.