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World Intellectual Property Day

This Sunday (26 April) is World Intellectual Property Day. In light of this we thought it would be useful, as well as a bit of a light diversion from current events, to look at a couple of recent trade mark cases featuring well known names and brands which also illustrate some important principles of trade mark law.

Babybels

The makers of ‘Babybel’ cheese (Fromageries) have recently lost a trade mark for the shape of their packaging following a challenge from the supermarket Sainsburys who were launching their own version of the cheese. Fromageries had been the owner of a UK shape trade mark for the below shape since 1996 which was expressed as being limited to the colour red and in the below dimensions.

The Court held that the shape of the mark was not particularly distinctive of itself and so the distinctiveness could only come from the colour. In such a situation a precise description of the colour claimed was important, but Fromageries had only limited themselves to the generic colour ‘red’ and should have been more specific, preferably by reference to the Pantone colour scheme.

This lack of precision meant that Fromageries lost a trade mark they had owned for nearly 25 years. They had tried to defend the claim by seeking permission to amend the limitation to the colour to Pantone 193C but this was rejected as marks cannot be amended once they are submitted. This case demonstrates how crucial it is to get the registration right at the outset otherwise the ramifications could be far reaching, even years down the line.

Bentley Motors

In a case that demonstrates the importance of filing your trade mark early to ensure you file it before any competitors and ensure you adequately the goods and services you intend to sell the world famous Bentley Motor Company has been found guilty of trade mark infringement in respect of clothing.

Bentley 1962 are a clothing company trading since 1962 who own various ‘Bentley’ trade marks for clothing, with the oldest dating back to 1982. Bentley Motors subsequently sought to expand in to clothing under its own branding, as is now common with luxury car manufacturers however none of its own existing trade marks provided any protection for the sale of clothing.

Bentley 1962 subsequently sued the motor company for trade mark infringement for use of the word ‘Bentley’ on clothing and was successful. This is a major blow for Bentley Motors who, unless they can reach a license agreement with the clothing company, will not be able to use their branding on clothing, something which has become a major source of revenue for other luxury car makers.

This demonstrates perfectly how no matter how strong or well recognised your brand is you only have trade mark protection over the goods and services you have specifically registered and your name remains free for other entities to use for other goods and services. It is important therefore to review what you currently do and what you might have plans to do under your brand and ensure you are protected accordingly.

Baines Wilson can assist you with all of your intellectual property issues. Do not hesitate to contact the team on 01228 552600 or by email to a.turley@baineswilson.co.uk.

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