Credit Management magazine October 2017

OPINION
Making your mark
Adam Bernstein looks at how businesses can
protect themselves against imitations.
AUTHOR – Adam Bernstein is a freelance business writer.
THE problem of protecting
the goodwill of a business
from abuse by another,
especially where the internet
is concerned, is nothing
new. Cases involving L’Oreal
v eBay, Interflora v M&S, Lush v Amazon
have all proved the point. More recently, a
case involving the kitchens and bathrooms
sector – Victoria Plum Ltd (t/a Victoria
Plumb) v Victorian Plumbing was ruled
on by the High Court in November 2016.
Without delving too deeply into the case
as it’s been widely reported, it involved
the alleged misuse of Victoria Plum’s
trademark (and passing off) by a rival,
Victorian Plumbing, through the use of
Google keywords ‘Victoria’, ‘Victorian’ and
‘Plumbing’.
WHAT ARE TRADEMARKS?
Trademarks, in their modern form, have
been around since the end of the 19th
century. The internet has been around only
from the end of the 20th century. Politicians
have never bothered to make much specific
law to regulate the internet, let alone the
use of trademarks on the internet. Given
that the internet is a global phenomenon,
it’s not unsurprising that the interaction
between trademarks and the internet is a
complex issue, even for lawyers.
Dai Davis, a solicitor and chartered
engineer at daidavis.com, says that the
starting point for any firm wanting to
protect its brand and position is to note that
historic trademark laws govern the use of
trade marks – even on the internet.
“Trademarks can protect goods,
services or both, and they exist in two
forms – registered and unregistered. As
the name suggests, to obtain a registered
trademark requires the applicant to pay
monies to a government agency that will
grant the registration if it’s satisfied that the
mark satisfies the criteria (below) and is
otherwise registerable.” Davis explains that
in essence, registration can be obtained
for anything which is (i) capable of being
represented graphically and (ii) capable
of ‘distinguishing goods or services of
one undertaking from those of another
undertaking’. This definition covers not
just the obvious word, sign or phrase but
even such options as colours, sounds (eg a
jingle) and even smells.
Interestingly, an unregistered
trademark exists automatically as soon as
someone uses it. As Davis points out, even
the ‘look and feel’ of a shop or internet site is
automatically protected as an unregistered
trademark right. He says these or analogous
rights exist in most countries of the world.
In the UK, they are also referred to as the
tort (ie legal wrong) of passing off.
“But where industries
converge life can become
difficult, originally
there were two ‘Apple’:
the Beatles record
label and the computer
company. It wasn’t until
the advent of music
being sold in digital
format that litigation
ensued between these
companies.”
When it comes to enforcement, the
right to bring an action for passing off
exists where the plaintiff can show that it
has sufficient reputation in a mark; that
as a result of a misrepresentation by the
defendant a significant proportion of the
public has been confused into believing
the goods or services of the defendant
are connected with those of the plaintiff;
and that the plaintiff has suffered loss
(which will usually be the case if there is
confusion).
REGISTRATION IS GOOD
“As might be expected,” says Davis,
“unregistered trademark rights are nothing
like as strong as registered rights, not least
because to show infringement the owner
of the unregistered trademark must show
actual (or likely) confusion in the minds
of customers (or potential customers)
by the use of the mark (or in the case of
an internet site the ‘look and feel’ of the
site) by another company.” In practice, he
says this will involve obtaining survey
evidence that is usually unreliable and
expensive.
But what if a rival abuses the ‘design or
get up’ of a product, service or website?
Well that too is protected. Davis cites
the Jif Lemon case. “Here an action was
successfully brought under the laws of
passing off to restrain use of the wellknown
yellow lemon-shaped container
even though the defendant used the name
‘Real Lemon’.”
TRADEMARK LIMITATION
Firms can’t just assume that trademark
law will stop all use of similar marks as
protection is limited by territory. “When
trademarks are used or registered in one
territory,” says Davis, “it does not provide
any protection in another territory”. For
example – the use or registration of a mark
in the UK does not provide protection in
Jersey and Guernsey which are different
countries for these purposes.” That said,
some countries group themselves together
to provide protection through a single
registration – the European Union being
an example of this. Particularly wellknown
marks have automatic rights in
those countries that ascribe to the Paris
Convention for the Protection of Industry
Property – ‘Harrods’, ‘Kodak’, ‘Coca Cola’
and the ‘Mickey Mouse’ character for
example.
Another limitation is that unregistered
or registered rights only protect the goods
or services for which the mark is used
or registered respectively. This means a
trademark can be safely used or registered
by different businesses simultaneously. A
good illustration of this is the word mark
‘lotus’ which in the UK has been successfully
registered by many companies.
shoe company – lotusshoes.co.uk
sports car company – lotuscars.com
• software company, now owned by IBM
(which is where lotus.com takes you)
• toilet paper company, recently
•
rebranded to ‘tork’, that uses
lotusprofessional-eu.com and
Algerian food distribution company –
lotus-distribution.com.
In addition, the mark is used by numerous
Chinese restaurants up and down the
country. For the most part, all of these
companies can coexist without one
treading on another’s toes.
“But where industries converge life can
The Recognised Standard / www.cicm.com / October 2017 / PAGE 36