Trademark Registration – Be Quick or (Maybe) Too Late

Trademark Mirkwood Evans Vincent

As lawyers, we often tell clients that trademark registration is important to protect good will in their business. After yesterday’s decision from the IP Enterprise Court, in the case of Caspian Pizza Ltd and others v Shah and another (2015) EWHC 3567 (IPEC), 9th December 2015, we should probably also now add “and do it quickly”.

I could not resist sharing details of this case, not just because it is legally and commercially informative, but also because it relates to the Caspian Pizza in Worcester, where I have partaken of the rather decent local fare after appearing for clients at the Worcester Commercial Court.

Timelines for Trademark Registration

In this case, the Claimant Caspian Pizza Limited (“CPL”) set up a chain of restaurants in Birmingham trading under the name CASPIAN. In 2002, Mr Shah set up a restaurant in Worcester with under the name CASPIAN with the consent of CPL. In 2002, CPL completed a trademark registration to protect the “CASPIAN” trademark. In 2013, CPL and Mr Shah had a falling out, and CPL sued Mr Shah for the continued use of the CASPIAN name in alleged breach of CPL’s earlier trademark registration.

Earlier Trademark Registration Invalid

The Court held that Mr Shah had a defence under Section 11(3) of the UK Trade Marks Act 1994 (“TMA”), because he had accrued goodwill in the CASPIAN name in the Worcester area prior to the trademark registration by CPL. The Court also held that CPL’s trademark registration was invalid because it was prohibited by s5(4)(a) of the TMA, which provides that a trademark cannot be registered if it would infringe an earlier unregistered trademark – viz Mr Shah’s use of the CASPIAN name in the Worcester locality.

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