‘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!

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Kim Highley – TOP ETAIL TIPS to stay safe and shop happy online this Christmas

December 19, 2014

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How much of your shopping was done online this year?

Check out this latest newsletter by Kim Highley to make sure you know your rights and keep yourself safe online over the holiday period.

We suspect that like 50% of UK Citizens this year, you will have used the internet to buy more than half of your Christmas presents.  This figure is at an all-time high and whilst online shopping offers so many advantages, there are also risks in the form of e-crime and online fraud which we should all keep in mind.

So why has the online shopping revolution really picked up pace this year?  Many analysts in the Etail sector believe it is thanks to the development of easy to use apps for smartphones and tablet computers.  Add in to the equation enticing offers from major retailers, not just on Black Friday and Cyber Monday but all season.  For example, Amazon, Marks and Spencer, Currys and Asos have offered as much as 70% off some of their lines this month.  With such high demand and enticement it is hardly surprising that some websites have gone down with technical difficulties.

We set out below some crucial golden tips for your next digital purchases, whether these are for last minute presents or the January sale items.

Download it Here – Top Etail Tips to stay safe and shop happy online this christmas by Kim Highley


Lending against your IP assets – fact or fiction?

April 1, 2014

how-to-work-out-the-true-cost-of-borrwingMany businesses recognise that their patents, trade marks and copyrights are hugely significant to the business and that these issues are important Board room topics. A well known brand has enormous pulling power and in today’s consumer lead society, it pays to be associated with the right brands. Technology protected by a proper patent portfolio will deter the competition from copying; and in today’s content driven society, a good website and copyright material can make or break a business. Why is it then that IP is so over looked when it comes to attributing a value to it or lending against it?

Many businesses don’t put a value on their balance sheet for IP for the simple reason that accounting standards don’t allow it unless the IP has been “bought in.” As a result of this historic standard, many SME’s are now choosing to hold their IP in an IP holding company, thereby acquiring the IP in from the trading company, and attributing a proper value to it. This has the added benefit of holding the IP at arm’s length from the uncertain trading conditions of a trading or manufacturing arm of the business. Transferring the IP is a relatively straight forward procedure but care must be taken to:

  1. Obtain a proper valuation of the IP to be transferred.

 

  1. Ensure the IP is legally assigned by a specialist IP lawyer.

 

  1. Ensure the IP is licensed back to the trading company for the purposes of protection from copying, the patent box etc.

One of the main issues at the moment is finding a valuation that is robust enough to withstand scrutiny, without spending a fortune. This is possible with some on-line valuation tools. More complex valuations are also undertaken but are generally only used where there is a damages calculation to be done for the purposes of litigation.

The good news however, is that the UK Government is pressing lenders hard to take account of IP assets in business. This means that some lenders are now seriously looking at lending against IP portfolios. This firm has in the last 2 years undertaken securitisation of a £1.5 million trade mark portfolio and has advised pension funds lending against brand assets. We’re also aware of specialist lenders who will lend to businesses against IP licensing streams. We completely welcome this change of attitude by lenders. In fact as IP is now usually the major contributor to company value in our view it can’t come soon enough.

Elizabeth Ward

Virtuoso Legal www.virtuosolegal.com

Contact liz@virtuosolegal.com or 0113 237 9900 and 0207 406 7490


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.