Case Study 2: Not taking a risk can be the biggest risk of all

One of our clients came to us with the proposed name of a new project. They knew their preferred name was the same as someone else's trade mark, and they were worried. The other mark was in a different field but it was unusually prominent in the public eye. Leading Counsel had already told our client to choose something else.

We weren't so negative: there is always hope. So, we applied some reality checks. What was the risk of getting an unpleasant letter from the other side if our client launched? Probably 100%. And what was the risk of the other side suing? 50:50, for all we knew. And what was the risk of the other side winning? Maybe 60:40 in our favour, but still pretty risky. 

The decider arose when we asked our client what it would cost to choose another mark. The answer was a six-figure sum: our client had already spent that much on marketing preparations. Changing voluntarily would be scarcely less costly than being forced to choose a new mark if we lost in court. So we advised our client to go ahead.

The outcome? An unpleasant letter duly arrived from the other side's lawyers. In response, we suggested a compromise: leave our client alone, and it will undertake to stay out of your field - but if you attack our client, we will attack your mark. The deal was quickly done, for a hundredth of the cost of a new mark. The mark is still in use today and has become one of our client's most successful brands.