Innocent Until Proven Guilty?…

February 26, 2015

One of the biggest problems we see as IP Specialists is disputes over ownership. These rarely go all the way to Court, but in the case of Innocent Drinks and the “dude” logo, the stakes were high and the matter did!

Intellectual property is often termed a monopoly right by lawyers. In practice this means winner takes all! You either own it and control it or you don’t. In between ownership and use, there is a raft of commercial possibilities – and elephant traps. One of which Innocent and their brand creators Deepend fell into.

Back in 1999, a design agency called Deepend created the well known “dude” logo for the then start up Innocent Drinks company – now known as Fresh Trading Limited.

Deepend and Innocent did a deal – without lawyers. They agreed in unsigned heads of terms that Deepend would create the branding and design for Innocent, and Innocent would allot them shares in the start up company. Deepend created the brilliant bottle logo design we’re all so familiar with…

Innocent never gave them shares. No contract was signed.

Let’s fast forward here 15 years, and Innocent drinks have of course become outstandingly successful – no doubt in part measure because of their branding. Deepend would have liked some kind of shares or payment but none has been forth-coming. And thanks to a recent High Court decision, Innocent now own the copyright to the logo, but Deepend haven’t and won’t be paid. (Subject to an appeal of course!).

A Lesson To Be Learnt?

The lesson is this – mere promises ARE NOT enforceable! Harsh but true. The directors or employees you are now in business with may not always see things as you do. People fall out and move on. If you are a supplier, make sure you will get paid by using a properly drafted contract. If you are a director or shareholder make sure the company has control over its intangible assets. There are few certainties in life but one that we see regularly is that if it is of value then people will fall out about it and getting clear contracts in place is often money invested against future disputes.

If you have any concerns about disputes over ownership, give one of our team a call for a no obligation chat on 0113 4032102 or email us!

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‘e’ by gum I’m confused!… Brand owners beware!

February 26, 2015

Of all the phone calls we receive, the unhappy ones are usually from brand owners who’ve been copied…

Sometimes the offender is a “looky likey” product but often an entire brand name or logo has been copied, if not slavishly, then in a way that is very confusing for the consumer. So it was of interest this week when I read about Enterprise Holdings Inc slogging it out against Europcar Group UK Limited over the use of ‘e’ as part of their car hire brand, and the obvious confusion that followed.

I won’t go into the legal details of this case, suffice to observe that both sides appeared to run every allegation and defence with great vigour. It is worth mentioning that his Honour Justice Arnold noted that both parties treated the dispute “as if it were a state trial.”

The vehicle hire market in the UK is big. Indeed the UK is the second largest hire market after Germany. The market is dominated by Enterprise, Europcar, Avis, Hertz and Sixt. Most bookings are made in advance via websites and intermediaries. The rest are done on the spot or by telephone. A highly relevant factor in this case in relation to customer confusion, was the transnational character of customers. In simple terms, many customers spoke limited or no English. Bear with me on this point; it is important, especially at airport car hire desks!

Jack Taylor the founder of Enterprise in the USA started using an ‘e’ logo in 1967. This has since morphed into the stylised ‘e’ seen below.

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From 2006, green was also used with black and white as part of their livery.
Enterprise started in the UK in 1994, and quickly spread through Europe. It now has extensive presence throughout and franchise arrangements in 14 EU states. The ‘e’ logo has been extensively used by them on signage and also on airport buses, car rear bumpers and the homepage of their website. Naturally the ‘e’ is a registered trade mark. As are a number of variations of it.

Europcar started in Paris in 1949 and used a simple ‘e’ type logo from 1965. It then moved to Europcar as a word mark and in 1988 developed a green and white colour scheme, which it now uses extensively. Europcar has extensive Worldwide coverage, but has little market share in the USA. The two now compete for #1 slot of market share. In 2012, after a consumer studies and a brand re-vamp, Europcar became:

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The digital age had arrived and was encapsulated by Europcar’s moving ‘e’ logo which was then used on the website, as signage on vehicles and as a phone application etc.

The problem that arose was that from its introduction in 2012, passengers queued in droves for the wrong car hire buses at airports! Europcar customers queued at the Enterprise car desks for car hire and vice versa. The nub of the problem here is that infact consumers have imperfect recollection of any trade mark!

In order for a brand to be truly distinctive, it needs to set one business apart from another. Imitating someone else’s mark, either knowingly or unknowingly does NOT make commercial sense for either party, and can lead to significant reputational damage. Whilst we understand that both companies had a history of using a prominent ‘e’ as part of their mark it doesn’t take a genius to work out that the public were likely to be confused by Europcar’s new identity, especially if they didn’t speak the local language.

This matter also illustrates the importance of getting specialist legal advice when re-branding and getting proper trade mark clearance searches done BEFORE launching a new brand.

Also beware of the digital space – this kind of short hand brand look needs careful thought!

We are totally baffled by Europcar’s stance on this.  Apart from any consideration of trade mark infringement, making a brand distinctive is of paramount importance.  This is often done with distinctive logos which then transcend language barriers.

Enterprise won the High Court battle – at great cost – but common sense should have prevailed well before then!

If this is something that concerns you, or you need any intellectual property legal assistance, give one of our team a call for a no obligation chat on 0113 4032102 or email us!


Even The Big Boys Get It Wrong In China…

December 10, 2014

made-in-china

Things regularly go wrong at trade shows. The usual phone call we get is either just before or just as the first day of the trade show opens and lo and behold some copy product is launched to an unsuspecting public!

If you are doing this then do be aware that in some European countries, the law will CLOSE YOU DOWN and ask the questions later…France springs to mind. Two directors I know of spent an uncomfortable 2 nights in a German prison at the start of one trade show. Even in the UK it isn’t unheard of for lawyers to serve Court Orders at trade shows, and then have goods seized or removed from sale. However, in the UK we normally reserve prison only in the case of contempt of Court if you don’t comply with a Court Order.

Chinese Car Manufacturer Copies Range Rover Evoque…

Pity poor old Land Rover this week in China at the Guangzhou Motor Show, when a local car manufacturer launched a £14,000 copy of their prestigious Range Rover Evoque. The Evoque is sold in China at around £40,000 and is made by a Chinese Joint Venture company comprised of Jaguar Land Rover and Chinese company Chery. What is sad about this situation is that such copying can actually destroy jobs in China and this behaviour makes even the big companies think twice about expensive JV’s with local companies and serious investment in an emerging economy.

Whilst no doubt Jaguar Land Rover’s IP experts are now crawling over the details of the design of the car and will undertake serious analysis of what is an identical component and what is simply over borrowed, this isn’t the first time the manufacturers LandWind have copied a European car. A few years ago LandWind launched a copy Vauxhall Frontera. This model was briefly sold in Europe until crash test failures forced its withdrawal from sale in European countries.

In order to succeed in China and through the local Courts, Land Rover will have to prove slavish copying of their design. This may deter them from taking action in China. Where there has been slavish copying the Chinese will close a factory down. However, I suspect LandWind have been too clever to get caught by that trap and have designed around any direct copy but have used the “look” of the Evoque to capture the bottom end of the car market in the Far East.

All of which goes to show that even the big names with all their resources can be copied in China. It’s a crying shame. It is far easier to copy than to innovate.

However, one thing the big companies will have in their favour is that they will have registered their brand as a trade mark. At the end of the day the LandWind car won’t ever have the Land Rover brand name on it, and its sales will be limited simply by virtue of the lack of brand awareness.

There’s a lesson here. If you want to export ALWAYS register your trade mark first!


When is a muffin, not a muffin?

October 10, 2013

 

 

When it is trade marked as a Duffin ®.

Hats off to business woman Bea Vo, owner and proprietor of Bea’s of Bloomsbury who had the imagination to cross a doughnut and a muffin to create a duffin. The idea wasn’t entirely her creation. Apparently the domestic Goddess Nigella Lawson did a recipe for jam doughnut muffin combos a few years ago. However, Bea with her creative flair made the duffin hers by the addition of raspberry jam, nutmeg and buttermilk. This juicy moist delicacy was one of many luxury creations sold in her popular and upmarket bakery in London. That was all well and good until Starbucks cake supplier Rich Products Limited came along and registered the name Duffin ® in class 30 (a food products category) for guess what? Yes you’ve guessed it – a product that is remarkably similar to Bea’s duffin cakes. In fact Rich Products have filed for a Community Trade Mark for a whole range of pastries and goodies. However, having already been granted a UK trade mark in class 30 for the Duffin®, Rich Products wrote to Bea and asked her to stop using THEIR name!

As you can imagine, Rich Products say that they DID undertake clearance search exercises and didn’t find any problems with the brand. Bea says they can’t have looked very far as her very popular duffins are available on line and a Google search should have brought them up. However, she had not registered the unique product as a trade mark. The short point is this. Registering a trade mark IS the surest way of protecting key brands. In certain businesses such as consumer goods, food and clothing, getting your brands registered is fundamental, and it is VITAL to do full clearance searches. This entails a lot more than doing identical word searches, and trawling the internet. Whilst it is clear that Bea has prior rights and that Rich Products can’t stop her, they can stop her from applying the duffin name to other bakery products.

A professional clearance search will look at not just the same words, it will also “landscape” around the mark to find potential phonetic conflicts and marks which are similar but not identical. This exercise allows you to limit the risks you face when filing or launching a product or service.

So what is the downside of filing a mark without a clearance search or against the advice of a clearance search? Well problems often arise from other trade mark owners who will object to your registration. It could result in costly and protracted trade mark opposition results, or in certain cases meaning that you get sued for trade mark infringement. In virtually all cases you will lose your filing fee. If this is a Community Trade Mark, then you will be down over £800 and unless you really want the mark, it often isn’t worth the risk.

Need a trade mark filing? Come and discuss it with Liz, Kim, Dan, Kate or Kirsten at the Sunshine Bakery. The tea and cupcakes are on us! Call 0844 800 8871 or email us dan@virtuosolegal.com.