The Las Vegas Review Journal ran a story today (link here) about Las Vegas exporter Panch Prasad whose company, U.S. International Trading Corp., is the owner of the DuBarry brand of cosmetics which it purchased in 1997. The brand is described as the first American brand of cosmetics established in 1903 named by its founder, Richard Hudnut, after Comtesse Jeanne du Barry, the mistress of King Louis XV of France who killed by guillotine in 1793 during the French Revolution.
Prasad was apparently contacted in 2007 by a Englishman name Michael Miller who said he had investors who could help expand the sales of DuBarry in the U.K. Prasad later discovered that on June 13, 2007, Miller (through the company The Dubarry Perfumery Company Limited) went ahead and filed an application to register the mark DUBARRY in the United Kingdom. Prasad’s company already owned a UK registration for the mark DUBARRY ALL CLEAR (for Non-medicated toilet and cosmetic preparations) dating back to 1963, but that apparently was not enough for the UK Intellectual Property Office to refuse registration of Miller’s application.
Prasad filed a timely opposition to registration, but the article highlights the ever growing cost of the legal battle to protect his brand ($35,000 in legal fees so far). The article also focuses on the problems faced by exporters who sell their products in foreign countries without first securing trademark protection for their brands and the systems in place to allow trademark holders to protect their marks worldwide such as the Madrid System for the International Registration of Marks administered through the World Intellectual Property Organization or the Community Trade Mark system administered through the Office for Harmonization in the Internal Market (Trade Marks and Designs).
Indeed, earlier this year, Prasad’s company filed a Community Trade Mark Application for the DUBARRY mark, which if it registers will protect the name throughout the European Union (including the U.K.). But as noted by Prasad (who claims to spend $15,000 to $20,000 a month on attorneys to protect 100 trademarks worldwide), it’s not enough to obtain trademark registration protection for your brands – you have to continuously monitor the marketplace to ensure that there are no other companies attempting to infringe on and/or take advantage of the reputation and goodwill of those brands.