What It Takes To Land A Punch Against An International Infringer

Hello everyone,

Today I would like to talk about a client of ours.

You may have heard about this case as it was covered in The Times by their legal editor Jonathan Ames.

Let me give you a quick overview of what happened and why it’s important.

How it began

Jordan Warne is a professional boxer and someone who has always been interested in boxing.

In fact, when he was a young boy, he used to train with his granddad, who fashioned him a training tool from a tennis ball, elastic, and headband to practice his hand-eye coordination.

When his granddad passed away in 2015 Jordan was inspired to develop this training tool and was the first person to bring this kind of tool to market as a widely available product.

He called it the “Boxaball” and slowly but surely, it became a smash hit with boxing professionals, amateurs, and enthusiasts alike.

In the early days, it even grabbed the attention of MMA fighters such as Thiago Alves (I’m told he’s quite a name) and also the likes of Tommy Fury and Molly Mae – who evangelized Boxaball.

Then “The Boxball” came along…

The twist in the tale

Confused?

Jordan was too.

Since 2017, Jordan had been experiencing year-on-year growth, and similarly had been increasing his investment in marketing his hit product.

But in 2021, all this changed.

The Boxball had entered the UK market.

It was, for all intents and purposes an identical concept but a cheaper and less well-made product.

The competitor also included a basic app to count combos.

The Boxball originates from Sweden and was stylised as Boxbollen over there – they just chose to advertise their product as The Boxball when they came into the UK.

What’s more, they enlisted a host of influencers online to back a campaign, which resulted in the likes of John and Toni Terry posting on social media about their product.

Ultimately, the near-identical product in conjunction with an astonishingly similar brand name hijacked Jordan’s product’s reputation entirely and entirely stymied his business.

This was most obviously seen in an immediate cease in growth for Jordan’s business – even when he had increased his marketing spend by a multiple of 5.

So, what do you do when someone comes along and, for all intents and purposes, hijacks your entire business from an international base?

You contact someone with the reach required to land a punch.

Issued claim

After failing to come to a reasonable resolution from Eriksson Bros AB in Sweden, we are at the point now where a claim has been issued for trade mark infringement.

In addition to this, there is a trade mark opposition proceedings in the UKIPO as it relates to Erikkson’s attempt to register an infringing brand.

Ultimately, we are our clients’ legal partners, and the initiation of significant litigation typically comes as a last resort and only when it is in their best commercial interests.

It’s about more than just the claim

In this case, for a fighter like Jordan to have his hands tied was simply unacceptable, as he is more than willing to compete with the Eriksson Bros product on its own merit.

Crucially, the infringement of his brand meant that this was never going to be the case. As is the case with trademark infringement the buying public has become confused as to which product originates from where.

With one of the products being markedly inferior in quality, this is a big problem.

In fact, Jordan has received a number of complaints about the Eriksson brothers’ products on his own listings – in and of itself proves this point about diminished quality as well as adding insult to injury.

What is perhaps most insidious about this particular instance of infringement has been the “celebwashing” aspect – where the use of paid celebrity endorsement has been somewhat successful in providing credibility to the imposter brand.

In doing so, this has not only propelled the encroachers forward but also drowned out Jordan’s presence in the market entirely. A bit of a suckerpunch, to be totally honest.

I am sure if the celebrities and agencies who were instructed were aware of this they would probably have not been so willingly involved in this instance – or indeed any other instance where a similar tactic is used to hijack an established product.

I imagine that this is fairly commonplace in social selling – especially where a dropshipped product can appear quite quickly on the likes of Instagram, Facebook and TikTok be sold for a quick turnaround and then disappear.

Ultimately, Jordan’s case exists as a bit of a canary in the coal mine for such businesses who find themselves suddenly gazumped by someone gaming the social networks to piggyback off a proven product and make a quick buck.

Boxaball is only the tip of the iceberg, and whilst the other side is more significant in stature than some social sellers there are plenty of opportunists that can pop up in the social selling space.

However, we are proud to be assisting Jordan in drawing a line in the sand against this kind of rising malignant activity.

Wrapping up

It is not often that I provide a peek behind the curtain in terms of the work that we do for our clients.

And of course, we would only talk about the same when we agree with the client that it serves them to do so (and when this is in the public domain as it is now we have issued the claim).

But the big takeaway here is something that is a non-negotiable for us, we are invested in the “why” behind these claims, and even more so the people, like Jordan, who have been wronged.

I think that connection to our clients and against fundamental wrongdoing is what helps us produce our best work – and I am sure Boxaball will be no exception.

If you need help with anything IP, do get in touch the usual way, we would be happy to be in your corner too.

I hope you have a great week,

Liz

Want to get started?

Click below to be get started working with us.

Leeds 0113 237 9900

London 0208 088 2367

Get in touch

News and Results