‘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!


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.