This case concerns a trade mark that should never have been registered by the owners due to claims it passed off an established brand name.
Established in 2004, Betfinder is an online sports betting aggregator providing tips to punters on the latest odds covering football, horse racing, boxing, darts, tennis and more.
Sales are made through online and print advertising.
In 2018, a sports publishing firm applied to register a trade mark for BETFINDER which Betfinder later learned had proceeded to registration.
The implications of this trade mark registration were potentially disastrous for Betfinder; it could have been asked to stop trading under that name by the trade mark owner and demanded to re-brand its business at great expense.
We opened up discussions with the firm representing the trade mark owner. When no reply was received, we initiated an invalidation action on behalf of Betfinder to cancel the trade mark.
This required reviewing and analysing evidence of goodwill and reputation, misrepresentation by the trade mark owner, and the damage caused to Betfinder, both in terms of its own reputation and loss of sales.
In the end, although the trade mark owner did not defend Betfinder’s allegations and decided to surrender the trade mark voluntarily, we proceeded with the invalidation action and successfully cancelled the trade mark. With the trade mark registry declaring the trade mark invalid and removing it from the trade mark register, we were also able to recover all expenses for Betfinder.
Following the successful outcome, we helped Betfinder secure trade mark protection for its business name meaning it would not need to go through the same legal proceedings, effort and expense again.
Betfinder founder, Darren Moore commented: “Very pleased with the professional and efficient service provided by Tidman Legal. Oliver was easy to contact and very effective in procuring a successful outcome with regards to our trade mark. He kept me fully informed throughout the process and I would highly recommend to all.”
Our takeaway message here is that all business owners should secure a registered trade mark for their business name as soon as possible. The strength of evidence required to succeed in a trade mark invalidity or cancellation action should not be underestimated. To hold goodwill in a service, a rights holder must have a business in that service; it is not enough to be merely associated with that service. In this case, the quality of the evidence was sufficient for a passing off claim to succeed.
Tidman Legal would like to thank Betfinder for allowing us to publish their story above.
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This article is for general information purposes only and does not constitute legal or professional advice. It should not be used as a substitute for legal advice relating to your particular circumstances. Please note that the law may have changed since the date of this article.