The British Educational Suppliers Association (BESA) has welcomed the news that the registered trade mark EARLY YEARS RESOURCES has been surrendered, after taking legal action on behalf of its members.
EARLY YEARS RESOURCES had been registered as a trade mark by a supplier to the industry, who was not a BESA member. They had subsequently challenged a large number of BESA members in an attempt to prevent other business from using the phrase EARLY YEARS RESOURCES.
It was the view of BESA and its members that the phrase EARLY YEARS RESOURCES needed to remain free for use by all those in the education suppliers industry and in the wider educational sector. For this reason, BESA applied to the UK Intellectual Property Office to cancel the trade mark registration which had been secured.
Working with its members, BESA compiled 300 pages of evidence, which included witness statements from both the industry and practitioners within the sector. It was following this submission that the organisation involved chose to surrender the trade mark and reach a settlement.
Patrick Hayes, Director of BESA, said: “While BESA fully recognises the rights of education companies to trade mark their brands, in this instance EARLY YEARS RESOURCES has long been understood and used by the industry as a description for the category of educational resources directed at early years settings and the early years foundation stage. It sits alongside similar phrases such as 'primary resources' and 'SEN resources'.
“As the trade association for education suppliers, representing over 400 companies in the UK, BESA was uniquely positioned to lead this action, but we couldn’t have done it without the support of our Executive Council, members of our Early Years Special Interest Group and concerned practitioners from the sector. We would also like to express warm thanks to our solicitors Fieldfisher, who represented us on this matter, alongside barrister Richard Reynolds of 9 Bedford Row for his advice throughout.
“We believe this trade mark should not have been granted, and we will carefully monitor the registering of similar marks in future.”
Hastings Guise, partner at Fieldfisher, said: "It was a privilege to work alongside BESA. The Association was a great client and the active support of its members made our job much easier. The trade mark in question had been registered on the basis of alleged recognition within the industry. So it was essential to demonstrate to the IP Office that actually the phrase described a product category. Once we had put in compelling evidence, I think the other party realised that they faced a steep hill if they wished to defend their position and backed down gracefully by surrendering the problematic registration. It is important for businesses to protect their trade marks, and Fieldfisher assists many clients with IP registration and enforcement. However, the trade mark registration system should not be used to take control of commonly used industry phrases and we were pleased that we could help BESA prevent that from happening in this case."