SITUATION: Digital Marketing agency Creative Bloom’s trademark was registered by Clive Bonny in 2019 with an online monitoring service to identify any future potential infringements. The total fees for an intellectual property review, a trademark search, an application to register and monitor were less than £500. Over the next 5 years Stuart Davies at Creative Bloom grew their digital marketing services across the region with many sectors and widened their portfolio of services to include a free IP review for their clients to mitigate infringement risks.

PROBLEM: In 2024 Clive’s monitoring service identified another digital marketing service applying to register a similar trademark. Clive advised Stuart of the likely infringement and contacted the third party personally and directly to ensure they were aware of the likely reputational damage of an infringement claim against their own brand and potential misdirection of client enquiries. Clive provided the third party with information on similar cases, the relevant legislation protecting trademark owners and his professional credentials as a certified IP advisor and accredited mediator visible on my public linkedin profile https://www.linkedin.com/in/clive-bonny-2644a16/, recommending a mediation process. His website provided additional clarifications https://consult-smp.com/archive/category/mediation with free video education accessible at https://consult-smp.com/ip-infringement

SOLUTION: After just two interactions with the third party the third party agreed to withdraw their trademark application and ensure no future likely infringements. Clive confirmed the cost-savings for the third party including £500 in costs from the Intellectual Property Office, and a minimum £5000 charge from an IP attorney. Mediation avoided a potential adversarial legal settlement time of several months with extra court costs. Clive’s total billed time to Stuart was less than £250 with no costs billed to the infringing third party as they had agreed to forfeit their previously paid IPO application fees.    

OUTCOME: Total settlement time from start to finish was less than 10 days. This enabled both parties to avoid distractions to continue to develop their own businesses without unfair or illegal competition. Mediation ensured all parties quickly reached an amicable outcome. Client feedback is shown below

‍https://maps.app.goo.gl/aWP76XGXVkGLc5Ns8

Stuart Davies commented “Clive diligently spotted a trademark infringement for us and got it sorted for in amicable way with the other party without any hoohar. Highly rated to protect your brand name!”

Response from the owner Thank you Stuart for approving the mediation route instead of taking formal adversarial legal processes. Our mediation reached a friendly agreement after just 2 hours without issuing cease and desist letter notices. Too often lawyers are too quick to attack infringements with a hammer when a light touch is a faster more cost effective solution. It is also vital to undertake a search of IP registers before any trademark application. This avoids wasting costs on a failed application. A qualified advisor can undertake a full search of registered and unregistered trademarks in about one hour for less than £300

Published with permission by Stuart Davies, Director www.CreativeBloomRocks.com

Source Clive Bonny, Strategic Management Partners www.consult-smp.com