The One Foundation

Registering tricky trade marks

Global Ethics Investments Limited is the company behind the ONE brand, which has raised over £17 million for The One Foundation (a UK Registered Charity) by selling bottled water, soft drinks and gin. The businesses donate their profits to fund life-changing water projects in the world’s poorest communities. When the business began, UDL represented it on a purely pro bono basis. Even with the expansion of its range of products and territories, we continue to act on a discounted basis.

Case Study

Case Type

Trade mark registration

Action

Devising a unique filing programme

Outcome

Secured a number of trade marks

Issue:

As can probably be imagined, the trade mark ONE is not particularly strong or distinctive. In fact, to get ONE as a word mark registered for anything would be nigh-on impossible. Similarly, because of its association with being ‘number one’, ‘the best’ or ‘primary’, there are a lot of other companies or individuals who have also registered or who use marks containing ONE in relation to the same or similar goods to those of interest to The One Foundation. This has resulted in the need for action against third parties, as well as defending actions brought against Global Ethics involving Pepsico’s O.N.E Coconut Water, Tesco Plc, One Juice Limited, One Pro Cycling Limited, The Lakes Distillery and Geia Foods A/S.

Action:

We have developed a pragmatic and cost-effective filing programme focussed on the trade marks which The One Foundation actually uses — rather than trying to obtain broader protection than necessary. This has avoided the expense of having to demonstrate use of the mark, as clearly there’s no point in wasting money filing for additional classes which then have to be deleted.

Outcome:

The most important mark to the client is the ONE & Butterfly logo, which is applied to all of its goods and services and which is the first to be applied for in new territories.

We also secured registrations for ONE HERO, ONE WATER, ONE FOR MONEY and THE SPIRIT OF ONE, creating a family of marks which can protect the client's interests.

Acting for a charity has, for the most part, helped to encourage a settlement of any contentious matters, because PR in relation to suing a charity or costing thousands in lawyers’ fees is not going to help a company. However, this shows the importance of undertaking trade mark searches and advice before embarking on a new brand name, because the more distinctive the trade mark, the less likely it is to receive objections from the Intellectual Property Office during the registration process — and the fewer oppositions or cases of infringement it will come up against.

For more information please contact Alan Fiddes amf@udl.co.uk.

0113 245 2388

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