Imitation may be the sincerest form of flattery but the result can be detrimental to a popular brand if a consumer wrongly assumes a connection between the popular brand and the imitator. To allow the imitator to ‘ride on the coat tales’ of the popular brand would surely be to allow it to take unfair advantage of the time and money invested by the brand owner in creating its successful brand.
A recent court case brought by clothing retailer Jack Wills against House of Fraser is an excellent example of how a company can protect its valuable brand through registering and enforcing its trade mark rights.
What is a trade mark? A trade mark is a sign that can be used to distinguish your goods and services from those of your competitors.
Your trade mark is likely to form an integral part of your brand and can be, for example, a logo, words or a combination of both.
In order to register a trade mark, an application will need to be made to the relevant trade mark registry, whether it is a UK or European trade mark (a Community Trade Mark). A trade mark attorney can normally assist with the registration process.
How do I register a trade mark? As part of the registration process you will have to specify a class of goods or services in relation to which you wish to register your mark, for example if you operate in the tourism sector, you may wish to register your trade mark under ‘Travel Services’. Once registered, the trade mark will provide you the right to the exclusive use of the mark in respect of the goods or services for which it is registered.
The protection offered by a registered trade mark is that as the holder of a mark, you have the right to sue any person who, without your authority, uses an identical or similar mark in connection with identical or similar goods where that use has caused or is likely to cause confusion.
You are granted further protection where your registered trade mark has a reputation and a third party (e.g. a competitor) uses an identical or similar mark which gives that third party an unfair advantage or causes detriment to the registered trade mark. In these circumstances, you will also have the right to sue for trade mark infringement.
How did Jack Wills protect its brand? As part of its identity and branding, Jack Wills uses the image of a pheasant, complete with top hat and cane, known as ‘Mr Wills’. Jack Wills protected its brand by registering the ‘Mr Wills’ logo as both UK and Community Trade Marks.
A dispute arose in October 2012 when Jack Wills’ noticed that House of Fraser was using a similar logo, consisting of the silhouette of a pigeon with a top hat and bow tie.
After a detailed analysis of the circumstances and facts in the case, the court determined that due to the similarity between the House of Fraser pigeon logo and the Jack Wills’ trade marks there was a likelihood of confusion on the part of the consumer. The court also concluded that the pigeon logo had taken unfair advantage of the reputation of the Jack Wills trade marks and therefore House of Fraser had infringed the Jack Wills trade marks.
The Jack Wills case clearly underlines the importance of maintaining and enforcing registered trade marks; without registered trade mark rights, Jack Wills would have had to advance a claim of ‘Passing Off’ which can be a much more difficult and expensive claim to make.
Branding has perhaps never been more commercially important and protecting your brand is often cited as being the key to maintaining a distinctive edge over the competition.
Maintaining your brand starts with identifying its valuable elements and protecting those where possible through, for example, trade mark registration. It is then necessary to ensure that your trade marks rights are enforced, through legal action where necessary.
By Will Charlesworth, a solicitor at Cripps Harries Hall LLP
For more information, visit www.crippslaw.com
