Should a small business roll over when challenged by a multi-billion conglomerate?
Charlotte Jamme says NO! The founder of bag design company Mia Tui on her legal battle with TUI AG, the travel company owner of Thomson Holidays
I have just come to the end of my ‘David and Goliath’ battle with TUI AG; the Hanover based Travel Company better known in the UK as Thomson.
I own Mia Tui, a bag company. We design and manufacture travel bags, gym bag, changing bags and handbags. Our USP is the interior of our bags; they all come with our pocketed interior and accessory bags which are designed to make finding your things easy, no more rummaging in an empty black hole!
How did I come up with the name Mia Tui?… at the time I was living in Vietnam and I wanted something to remind me of where I came up with the idea for the bags. I love the name Mia as it is easy to remember and means ‘MY’, and after spending time on Google translate ‘TUI’ came up as ’BAGS’ in Vietnamese, it was as simple as that. Mia Tui means ‘My Bags’
We have been trading for four years, and had already trademarked our logo back in 2010, but whilst attending ‘Innovation for Growth’ with the British Library I was advised to trademark the text MIA TUI.
This is where the problem started. After filing my application within Class 18 (Handbags, Travel bags & accessories) there is a two-month window where your application can be challenged.
Towards the end of the two-month window I got a letter from TUI’s solicitors asking me to remove my application as their client had already registered TUI in this classification and that the two marks are “highly similar and would cause confusion on behalf of the public”.
Now call me stupid, but doesn’t TUI sell holidays? I am sure the public won’t confuse buying a holiday with buying a bag!
The paperwork given to me showed TUI AG has registered ‘TUI’ in every trademark classification.
I decided to just ignore the letter; I then got a call from the solicitors asking me if I was going to remove my application. I told them that I was not going to voluntarily remove it, to which they sounded a little shocked.
Dealing with a trademark challenge
This was when the official process started to challenge my trademark application. In any challenge like this, the UK Intellectual Property Office becomes the mediator and you have a process to follow to counter challenge the trademark opposition.
This can become very daunting and frightening for a small business, knowing that the company challenging your trademark has a team of solicitors and quite frankly a ton of cash to see this through.
I spoke with the UK Intellectual Property Office, which gave me some advice on the process; the thing that scared me the most was that if I was unsuccessful they could award costs to TUI AG.
I decided that I wouldn’t let this beat me; I had worked too hard, for too long to just roll over. Anyone who has started a business knows the long hours and small pay that comes with the territory of a start-up! I did the only thing I could do which was to go public and use the power of ‘the people’ to highlight how ridiculous the TUI AG challenge was.
I was in essence fighting for my life, we couldn’t afford to re-brand, and I damn well wasn’t going to lose my business over this, as the challenge was in my eyes unjust.
Turning a legal threat to your advantage
So what did we do? Blogging, Facebook, Twitter, local and national newspapers, and my Dad wrote into BBC Look East and the JVS show on BBC 3 Counties radio.
- September 12: The Daily Mail picked up the story
- September 13: The BBC followed suit
- October 15: We sent an open letter via the Mia Tui blog
- February 5: BBC 3 Counties radio supported our fight
- February 5: The BBC covered news of our victory
Thankfully for us we got the support we needed. After appearing on BBC 3 Counties ‘JVS show’ one of the listeners offered his wife’s expertise! Vicki works for Saunders & Dolleymore LLP and is a Trade Mark Attorney. Vicki took on the case Pro Bono and straight away this removed the emotion out of the situation for me.
Vicki negotiated with TUI AG solicitors and successful got TUI AG to remove their opposition, clearing the way for the UK Intellectual Property Office to grant the Mia Tui Trade Mark within Class 18.
The support along the way has been amazing with emails and messages of support from so many people.
So no… We should not just roll over when the BIG boys come challenging, as long as you have validity in your case don’t give up, keep fighting!
Charlotte Jamme is the founder of Milton Keynes-based Mia Tui.