‘Intense’ battle to secure protection for registration of valuable brand name

Summary

When it faced difficulties in securing protection for a key trade mark, ‘INTENSE’, global consumer goods company, Reckitt Benckiser Group (Reckitt), engaged our Trade Marks team to overcome the objections of the EUIPO and UKIPO respectively. Reckitt sought to register the trade mark ‘INTENSE’, in the EU and UK, for inter alia “contraceptives, lubricants” in Class 5 and “contraceptive devices, condoms” in Class 10. We filed legal arguments contesting the EUIPO and UKIPO objections respectively and, against the odds, successfully persuaded the Registries that the objections should not apply to goods such as “condoms” and “contraceptives”, which are key to our client’s business. 

The story does not end there, however. Upon publication, Reckitt’s EUTM application became the subject of two opposition actions. One of the oppositions was based on an earlier registration for the trade mark INTESSE, covering goods in Class 5. We mounted a resolute and successful defence of Reckitt’s application, and the opposition was dismissed. The other opposition is ongoing.

Assisting Reckitt in this case required our whole repertoire of skills, from overcoming inherent registrability objections at the Registries, to succeeding in contentious matters and, exercising our commercial expertise to achieve the best outcome for Reckitt.

Value delivered

This was a great success for Reckitt, who now have protection for trade mark in the UK and it is hoped that they will shortly have a registration in the EU. Having invested heavily in building the brand and creating considerable customer recognition, throughout the EU, it is vital that Reckitt’s has registered rights upon which they can protect their investment.