Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
The
owners of “Glasgow’s IvyBar
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.
MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.