The function of a trade mark is to distinguish the goods and/or services of your business from those of others. Two recent disputes in the US and UK highlight the importance of not only carrying out some due diligence before deciding on a new brand but that distinctiveness can make all the difference.
What constitutes infringement?
Infringement of a registered trade mark ("TM") occurs when, in the course of trade:
- an identical sign is used for identical goods or services;
- an identical sign is used for similar goods or services and there is a likelihood of confusion by the public;
- a similar sign is used for identical goods or services and there is a likelihood of confusion by the public; or
- a sign takes unfair advantage of the reputation of a well-known TM
Where the sign and the goods and/or services are not identical, there must be a likelihood of confusion by the public.
Unregistered TMs are protected by the common law of 'passing off'. To establish infringement, you must show: (1) you have goodwill and reputation in the brand, meaning the public will recognise it as your brand; (2) that someone is misrepresenting a connection between your brand or there is a similarity which makes customer confusion likely; and (3) damage to you or the brand.
The Easy Peasy Dispute
Deep Ellum Brewing Company introduced its 'Easy Peasy IPA'to the market in 2015. Canarchy Craft Brewery Collective sells the beer in Texas and Oklahoma, with plans for future expansion. 'Easy Peasy IPA' is the only US trade mark registered for beer, using these words.
On 30 September 2019, Hard Tonic launched its 'Easy Peasy Hard Tonic',in Missouri. Hard Tonic's drink is made from carbonated water and fruit juices - more like an alcoholic soda water, which is lighter and less calorific than beer, but with a similar ABV. It would therefore be classed differently to 'Easy Peasy IPA' if Hard Tonic sought to register a TM, as beer is categorised separately from all other alcoholic drinks. The drink is advertised on social media using the username '@drinkeasypeasy' and on their website at 'drinkeasypeasy.com'. The 'Easy Peasy' words are also used on the cans and glass tumblers in the bars where it is served.
Canarchy raised an action against Hard Tonic, alleging that Hard Tonic is infringing its registered rights, taking advantage of its reputation and goodwill and is going to cause public confusion.
How this case could be decided in the UK
If this action was raised in the UK, Canarchy would be looking for similar remedies as have been sought in the US, such as a court order to stop Hard Tonic from branding its beverages using the 'Easy Peasy' wording, destruction of all goods using the name and financial compensation.
Given that these marks and the goods themselves are not identical, the argument in this case would revolve around whether there was a likelihood of confusion. It could be argued that the similar element "Easy-peasy" is not enough to mean the public would be confused into thinking that these are from the same business. However, this case does illustrate the dangers of choosing a similar brand to that of another entity. Hard Tonic would much rather be investing in its new brand than fighting a court action.
Closer to home, the social media feud between Sugo Pasta Kitchen in Manchester and Sugo Pasta in Glasgow is interesting. The Manchester restaurant opened in 2015 and applied for TM protection for "Sugo Pasta Kitchen" in October 2019. The Glasgow restaurant obtained protection for the word 'Sugo' in June 2017 and applied for protection of their "Sugo Pasta" logo in September 2019 but only began trading this month.
Although the Manchester restaurant has no registered trade mark protection, at present, it has built up goodwill in the name since 2015
However, the case illustrates the dangers of a heavy-handed approach to brand protection. Currently the case seems to be undergoing trial by social media and whilst both parties may believe they have a good case it is the public who are currently deciding who is in the right!
Tips for organisations when deciding on new branding
These cases do illustrate the importance of having a clear brand protection strategy. When deciding on new branding it is important to:
- be creative. Distinctive marks not only have better chance of being registered, they have a better chance of becoming well known. We discuss the importance of distinctiveness further here
- at the outset, invest in proper clearance searches to check whether there are any existing registered rights for your proposed brand.
- carry out general internet and social media searches for unregistered/common law rights which could be enforceable against you.
- decide on the best strategy when you think someone is infringing your brand. For example, is a softer initial approach preferable to avoid trial by social media.