Trademark Breaches – David vs Goliath

Nokia, the mobile phone brand now owned by Microsoft, recently asked Lowndon, maker of the HERE for iPhone app, to rebrand its application or face legal action.

In one regard, and it is a very important one, I fully understand why. For a start, the ‘passing off’ law would appear to be on Nokia’s side. They’ve a trademark covering the name and they have invested a great deal of time and money promoting it within the ‘mobile communications space’. On the other hand, I suspect most of us are capable of seeing the difference and for a generic word such as ‘here’ not to be available on geo-specific apps is, well, kind of restricting to everyone else.

With all their corporate clout, I suspect Nokia will get their way and Lowdown will be faced with the not inconsiderable expense of changing their app and their own marketing – which I suspect will be disproportionately expensive for them.

Now, let’s imagine the boot is on the other foot. Actually, no need to imagine, We, as in Cloud Heroes, have a real example of where the small business seems to have little chance of enforcement of trademark laws without risking potentially expensive litigation along with all the stresses that brings with it.

Cloud Heroes is a trading name of JPC InfoNet Limited. The brand was introduced a number of years ago and much has been invested in it. We own the .com, .net and domain names; we own the UK Limited company name and we have a Registered Trademark covering the Cloud Heroes’ logo and name. So, you’d think we’d be fairly safe from anyone, especially someone operating in our market, using our intellectual property and trademarks. Well you’ve probably guess by now, this is not the case!

One of the key elements of the Cloud Heroes brand for us is that it is not (just) us who are the heroes, it is the customer. Those taking the bold (back then – much more risk free these days) step of moving to the cloud. As a smaller company, we have to be more agile, innovative and simply ‘better’ than our competition. One of our key competitors is Rackspace. They are one of the market leaders and ‘claim’ to be market innovators having launched all kinds of services not available elsewhere – but they obviously haven’t looked in our direction.

Much of what they launch by way of new services, we have already been doing for a considerable time, it’s just that relatively few people know about it compared to Rackspace’s market penetration. So there is clearly the opportunity for prospective, or even current customers to become very confused when they see the likes of Rackspace, promoting ‘Cloud Heroes’ as one of their lead marketing campaigns. And they’re not alone, Oracle are at it too.

Cloud Heroes is proud of its tradition of innovation, service and reliability and the fact that every product we deliver in this space is ours, created by us and running on our own, carefully crafted network. We don’t want our customers and prospects to suspect that we’re reselling a Rackspace product – we believe we’re better than that.

So why not threaten legal action? Well we could but there are two key considerations aside from the cost and the stress:

1. Rackspace has a very aggressive approach to anyone who threatens them with legal action over this kind of infringement. They say it is to protect them from extortion by ‘chancers’ – but where does that leave companies like us? Given the law can be an a***, will there be a happy ending?

2. Some lateral thinking. Given that Rackspace will be investing much more in the marketing of ‘Cloud Heroes’ than we could ever afford, do the potential benefits to us of gaining greater market exposure given our dominance of ‘Cloud Heroes’ on search engines, outweigh the potential damage to our IP? I’ve certainly heard of cases where such infringements have benefitted the ‘wronged’ but of course, it is a risk, but is it one worth taking?

There is, as yet, no outcome of this case. I’ve written to Rackspace and Oracle myself but have heard nothing by way of a response. I could get a solicitor’s ‘Cease & Desist’ letter sent but then the two points above still remain burning questions.

What is your view? Have you had a similar experience of being infringed or indeed, of having infringed someone else’s trademark? I’d be delighted to hear from you with regards to your experiences and any inputs which I might find helpful.

making better connections

Request a Callback