The owners of “Glasgow’s Ivy Bar and Restaurant” were recently forced to change its name, despite having used it for some 6 years, due to alleged infringement of the registered UK trade mark for  THE IVY owned by the well known  Ivy restaurant in London. According to The Herald, the estimated costs and losses associated with this rebrand were around £30,000.  

As elsewhere in the EU, in the UK a registered trade mark is infringed if a person uses without the owner’s consent in the course of trade, (i)   an identical mark for identical goods/services and/or (ii) a similar or identical sign is used for similar or identical goods/services which results in actual or likely confusion amongst customers as to the origin of the goods/services and/or (iii)  where use of a sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of a famous trade mark.

Subject to any defence argument based on acquiescence,  there was a  clear-cut case of infringement against the owners of the Glasgow restaurant under one or other or even under all three heads.  Under head (i) for example UK case law is clear that descriptive or semi descriptive elements such as the words “Glasgow”, “Bar” and “Restaurant” are not considered to be part of the sign being used.  Even if the  marks were not found to be identical, a good  case could easily be made out under heads (ii) and (iii). 

The common law action for passing off may have been more difficult to establish, given that it depends on establishing inter alia localised reputation and goodwill as well as likelihood of or actual confusion. Here both goodwill and reputation would have to be proved to exist in the London Ivy in Scotland/Glasgow. That might have had its challenges here, despite the internet, given the geographical distance between London and Glasgow.

In this case services not goods were the issue. The Ivy's services were provided in London. If the London Ivy was known of  in Glasgow that would establish a local reputation but would not establish goodwill which would need actual business to be done there. Evidence of actual reservations made by Glasgow based customers would might be enough but the issue has not been tested or decided. In the  Cipriani case this issue of local goodwill came up  but there was no need to decide the point.

One of the advantages of registered trade marks - as opposed to reliance on passing off - is that it takes effect throughout the UK. This means there is no need to prove local goodwill or reputation.

Class 46 thanks Gill Grassie and Robert Buchan (Brodies LLP, Edinburgh) for this contribution.