When Goliath Wins: the importance of registered trademark

Sparkle Visual Web Design, an indie app for macOS, was born exactly 10 years ago, with the launch of version 1.0 on the Mac App Store in April 2014.
Unfortunately, its 10th anniversary was a bittersweet one: today, Sparkle dies.

What happened?

There have been many developments over these 10 years: starting from the classic garage without knowing where we would end up, we eventually founded a startup in 2019. It was hard work but full of rewards.

In 2021, to protect our investments, we decided to register the trademark. But how does trademark registration work? In Europe, there is an organization called EUIPO that handles these matters. It uses a classification system (Nice Classification) that identifies specific products and services. Clearly, if the trademark you intend to register conflicts with existing ones, the rights holders can oppose the registration.
We checked that there were no similar trademarks in the relevant category and proceeded with the application. We were confident, having always acted honestly and in good faith, and saw no obstacles ahead. But in March 2022, just days before the registration process was set to conclude, the unthinkable happened: we received notice of an opposition. To our disbelief, the worst-case nightmare scenario materialized: the opposing party was an Italian giant, a true Goliath.

Goliath does not deal in software sales, nor does it have interests in website builders, web hosting, or macOS applications. Moreover, we’ve been in the market since 2013, with the software officially registered in Italy with SIAE. Despite gaining popularity over the years, no one had ever raised concerns about our operations or our use of the common, perhaps even banal, name Sparkle. So why was Goliath targeting a small startup? Even now, we don’t fully understand this hostility, but probably only because they can.
Consulting a lawyer to determine our course of action, we discovered that while classifications exist, they are only indicative. Overlaps can occur in certain categories, particularly between products and services. In the specific was between classes 9 and 42 (https://euipo.europa.eu/ec2/classheadings/?niceClassLang=en).

Sparkle was born in Florence, home to Michelangelo’s David. Confident in our arguments, we decided to assert our rights, believing we could defeat Goliath.
What were our arguments? As mentioned, Goliath has no specific interest in Sparkle’s field. Goliath focuses on B2B services for companies, while ours is a software product aimed at individuals, small businesses, and agencies, with no overlap with their business. The logos are entirely different. The product has been in the market for 10 years without dispute. Additionally, while Goliath initially registered in our category, they let that registration lapse years ago, demonstrating, in our view, a clear lack of interest in this sector.
We submitted our objections. Initially, Goliath appeared reasonable and open to discussing a coexistence agreement, but their demands quickly became overly restrictive. These limitations, in our opinion, would not have allowed us the minimum operational freedom we needed, even while staying exclusively within the website builder domain. Faced with this impasse, confident in the strength of our position, we, like David, decided to sling our stone and proceed to an EUIPO ruling.

In April 2024, the verdict arrived—harsh, clear, and ruthless. Our arguments were not even minimally considered. According to EUIPO, there was indeed overlap, and the trademark could not be registered.
David was stunned, and two months later, Goliath delivered the final blow: a cease-and-desist letter prohibiting the use of the name Sparkle for our app.
Right? Wrong? At this point, with an unequivocal decision from EUIPO (which we loudly proclaim as deeply unjust), the law was on their side. Fighting an unequal battle against a giant, with a legal case that would have drained us, was pointless given the disparity in resources.
It’s worth reiterating that, in our use of the name Sparkle Visual Web Design, there was never any reference to Goliath in any way, shape, or form. For us, the two businesses were entirely different, operating on such distant tracks that they could never intersect.

But now we must, bitterly, accept it: Sparkle is dead.

Lessons learned

From our painful experience, I feel I can suggest some precautions to those embarking on a startup journey or developing an indie app/game:

• It may seem obvious, but finding an original name not only uniquely characterizes your brand but can also help avoid legal conflicts if the project becomes successful. In the case of Sparkle, this aspect was significantly underestimated. We liked the name and wanted to use it. To compensate for its rather generic nature, we added “Visual Web Design,” but the trademark registration process was carried out solely with “Sparkle” for the descriptive part. We can’t know what the outcome would have been if we had tried to register the full name, but we certainly would have had better chances;

• There are highly effective AI tools that can assist in the name search phase: excellent ones can be found by searching for “business name generator”;

• Proceed with registration as soon as possible: during the initial phase, it may seem premature to register a trademark, as many projects never see the light of day or fail to achieve the desired success. For this reason, keeping startup costs to a minimum is often a priority. Trademark registration is certainly a cost, but not an exorbitant one (around $1,000 for a region like Europe), and it will definitely cost less than hiring a good lawyer if someone claims rights over your name;

• Before undertaking the registration process, carefully conduct all necessary checks to ensure, with reasonable certainty, that it does not conflict with existing registered brands. The service provided by TMView - https://www.tmdn.org/tmview offers all the tools for this purpose. The registration process can trigger a nightmare scenario if objections arise, especially when the rights holder is a large corporation eager to set its lawyers to work, creating a significant disparity in resources. If you have doubts, it’s better to avoid registration—Let sleeping dogs lie;

• Rebranding is an arduous process. All the resources invested in this process are taken away from product improvement, marketing, and the regular management of your work. The entire online presence needs to be rebuilt, and the reputation gained over the years is at risk (it’s not the same as rebranding by a large brand with massive resources). The outcome is uncertain, so why put your investments at risk? An ounce of prevention is worth a pound of cure.

P.S. If you’re curious about our new name, here it is: from today, we are Sitely. It will be a tough journey, but we are even more determined and will put all our energy into surviving and continuing the path we’ve been on for the past 10 years.