Question :
We have been contacted by an Australian law firm who is requesting that we forfeit some of our trademarks in our respective field. We don’t feel that this is necessary, or that their allegations hold any real weight but also at this stage don’t want to involve our lawyers and spend valuable capital to fight this. We feel as though this company is deliberately trying to pray on us during this pandemic, and I am just wondering what the best course of attack here is? I have attached the letter in the link section from the IP company. Look forward to hearing what anyone comes back with. https://docs.google.com/document/d/1RsuHziZsX3BYXM1vg743tl0F_spvm_UZzGRQpid31Dg/edit

Question submitted 24/04/20 @ 10:10am
Industry: Legal
  • Hi there. I’m a lawyer at MinterEllisonRuddWatts. Not my area, but I had a chat with one of our IP partners Chris Young. There is some thought and strategy needed as to how best to respond to this sort of letter (they are not uncommon). Chris is happy to have a chat with you (without charge) if you want to give him a shout. His details are on his link here – https://minterellison.co.nz/people/chris-young

    Good luck!

    Hi, I’ve taken a quick look at the letter.

    The other company is not asking you to give up your trade marks – they are asking you to narrow the scope of the services for which you have registered your trade marks so that your trade marks and theirs can co-exist. As there does not appear to be an overlap between your respective businesses, this seems like a reasonable approach to me.

    You would need to consider whether the services specification they have proposed adequately covers the services that you provide. I’d recommend talking to a trade mark specialist on this. The team at Potter IP http://www.potterip.com/ are very good.



    Thanks Jeremy, I will reach out to Chris. Really appreciate your help.



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