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An existing client asked us to look at their trade mark situation. During a difficult trading period they’d transferred all their assets to a new company: all except their registered trade marks which remained filed under their old, and now defunct, company name.
This oversight only came to light when the registrations were due for renewal. Another Intellectual Property company had advised them to simply file a new application under the present company name and let the original registration lapse.
Unfortunately, when a new application was presented the owner of a very similar trade mark threatened to oppose. A successful opposition would leave our client without any right in the trade mark they had been using and which had been associated with their business for a very long time. By now the original trade mark application had lapsed because the renewal fee hadn’t been paid. It wasn’t looking good.
They turned to us for help. What could be done to save the situation?
We took over the case from the other IP company and contacted the Treasury Solicitor direct. They control the assets of dead companies (and individuals with neither a will nor heirs). We were up against deadlines for the late renewal of the original registration and the deadline set by the third party opponents. Decisive action was required to negotiate with the Treasury Solicitor to secure a good price for the old registration, complete the transfer, lodge the application with the Registry to record our client as the new owner and renew the registration.
Our swift and decisive action completely turned the tables on the opponent; their trade mark registration was now invalid and our client had the upper hand.
There’s a lesson in this case for all businesses: when you’re transferring assets don’t forget your IP assets. Only when you’re faced with their loss are you reminded how valuable they are to your business.
