Case Study 7: Restoring the status quo

Before it first instructed us, a new client's Community Trade Mark application had inadvertently been withdrawn on the brink of registration. Our client wasn't at fault: to the contrary, it had filed its application promptly to secure a lead over similarly-named competitors in the EU. Now its strategy lay in tatters.

On reviewing our client's papers, we found that the situation had already gone from bad to worse. The CTM application had been re-filed but some of our client's competitors had obtained conflicting earlier rights in the EU in the meantime. This was disastrous: those rights left our client vulnerable to infringement proceedings - merely for continuing to use its own mark. 

Following the little-trod path of restitutio in integrum, we had to persuade the relevant trade mark authorities that positive withdrawal of a CTM application could be reversed. We were able to revive our client's original application and secure registration with the benefit of its earlier filing date.

In parallel, we used the leverage of the revived CTM registration to negotiate agreements with the owners of the intervening rights or to force them to withdraw.

At last, our client was left safe in the knowledge that its brand had been secured throughout the EU. An involuntary re-brand had been avoided.