A recent trade mark dispute between family members in Cardiff, Wales, shows the importance of having robust agreements in place when the same brand is being used by different businesses. Such feuds could be avoided by checking whether you can register your trade mark and whether others have rights which your use may infringe.
Clark’s Pies is a Cardiff legend, having first been made in 1913 by Mary Clark. Descendants had been using the trade mark ‘Clark’s’ in relation to pies sold at its respective shops in Cardiff, despite there being no financial connection between them.
In 2005, three of Mary Clark’s descendants whose Clark’s shop is in the Grangetown area of Cardiff registered the trade mark ‘Clark’s Pies’ in the UK. The other shop, in the Canton area of Cardiff, had been trading as Mary Clark’s Pie Company, and the parties had previously reportedly been discussing a merger.
However, discussions had clearly discontinued, because the owners of the registered trade mark then requested, apparently via Trading Standards, that Mary Clark’s Pie Company cease using the ‘Clark’s Pies’ trade mark because it was infringing its trade mark registration. Mary Clark’s Pie Company is now trading as Victoria Park Pie Company.
This dispute is the latest in a litany of disputes of varying sizes between companies or individuals using the same or similar trade marks, and often having to incur considerable expense seeking to defend their rights and, if unsuccessful, having to rebrand.
The Budweiser dispute between the Czech and the US brewer has been fermenting for decades, and continues to be played out across the globe. While it appears to be the case that the Czech brewer’s use predates that of US brewer Anheuser-Busch, the US brewer has in some jurisdictions used the mark for so long that it has also acquired rights in the trade mark.
The legendary Hotel Cipriani successfully took action against a London restaurant trading as Cipriani London with disastrous results for the London restaurant, which had to pay over £1.5m to the Venice hotel and subsequently went into administration.
In a more recent example, Hanna-Barbera, producers of the Scooby-Doo cartoon, has taken action to stop a chip shop in Essex from using or registering the trade mark ‘Scooby Snax’. While this has been reported as a David and Goliath battle, it seems clear that Hanna-Barbera has some justification in its stance.
So, how can those in the food sector avoid costly disputes and the inconvenience of having to rebrand?
Chris McLeod is a vice president of the Institute of Trade Mark Attorneys and director of Trade Marks at the London office of Squire Sanders’ London.
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