Protect your good name

Sumi Nadarajah, associate, FR Kelly
Sumi Nadarajah, partner and European trademark attorney, FRKelly, Dublin and Belfast

Sumi Nadarajah, associate with F R Kelly European trade mark attorneys, documents cases of trade mark infringement in the Irish market and urges companies to protect their brands.



22 April 2013

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In the last 24 months, two major companies in Ireland have taken legal action against competitors for misuse of their trade marks. In 2011, McCambridge Limited received a number of complaints from customers who had mistakenly purchased Brennans Stoneguard Wholewheat loaf instead of the McCambridge product. McCambridge, a family-owned business holding about 30% of the brown bread market in Ireland, claimed that Brennans, the largest bakery company in the State, which was looking to break into the brown bread market, had copied its packaging, thereby causing confusion in the marketplace. 

The High Court agreed, and an injunction was granted prohibiting the continued sale of the Brennans product using the offending packaging. Brennans appealed this decision and the matter was brought before the Supreme Court, which dismissed the appeal, upholding the decision by the High Court, and giving Brennans 48 hours to remove from the shelves, all products bearing the offending packing.

Aldi v Tesco

In May 2012, German retailer Aldi initiated legal action against competitor Tesco Ireland for allegedly infringing its trade marks in a price comparison campaign run by Tesco. The action revolved around Aldi Ireland claiming that Tesco has been misleading customers in its in-store campaign by failing to compare like with like. The matter was brought before the Commercial Division of the Irish High Court but the case was settled a week before it was due to be heard. As part of the settlement, Tesco was reported to have agreed to pay Aldi €150,000 and apparently had to give undertakings not to engage in misleading comparative advertising with regard to a whole host of criteria such as the quality, nature and origin of a product.

Commercial Court

It has, in recent times, become apparent that trade mark owners are actively initiating legal proceedings in this country and are not slow to take steps to protect their names and reputations. There are a number of reasons that could be attributable to this emerging new practice, not least being the relatively new Commercial Court in Ireland, which has only been in existence for the last nine years or so. One advantage of this new system is that in addition to hearing matters on an expedited basis, the court is also populated with judges who specialise in intellectual property law. The Commercial Court is therefore fully geared to deal efficiently and equitably with matters of this nature. This was not always the case with the Irish courts, which have traditionally been seen as slow and lacking in expertise when it comes to specific intellectual property matters such as trade mark infringement or passing off.

These recent events indicate a shift in practice in Ireland, which can only be beneficial to consumers and brand owners. However, it could spell trouble for companies which either unwittingly or recklessly stray too close to their competitors names or packaging.

Common practice in US

Whilst this may be a relatively new turn of events in Ireland, brand owners taking steps to protect their brand names is nothing new in the world of commerce. In countries like the United States, it would be commonplace for trademark infringement action to be initiated by brand owners. Last year alone, millions of newspapers throughout the US were filled with headlines such as "Louboutin sues YSL for trademark infringement", "Tiffany files lawsuit against Costco for trademark infringement" and in more recent news "Under Armour suing Nike over advertising slogan". These are all arguably well-known trade marks which would justify their owners expending the time and cost in defending their rights in ever-litigious America.

Apple goes after grocery

Recent months have seen Apple go head to head with Samsung in a high profile patent infringement battle. Samsung isn’t the only company Apple’s legal team has targeted. Over the years, Apple has filed lawsuits against numerous companies, including Microsoft, Amazon, HTC and Motorola. However, it has recently been reported by Reuters that in addition to fighting tech companies, that Apple is now taking on an online Polish grocery store Apple is accusing the online store of copying its famous logo in an attempt to win customers. This isn’t the first time Apple has gone after a supermarket. In 2009, the company disputed a trade mark application in Australia after retailer Woolworths changed its logo to include the shape of an apple. Apple objects to Woolworth’s trademark application extending to electrical goods and technology. This is a good illustration of a company that takes its trade mark protection very seriously. No infringement, however small, is left unattended. Nothing is left to chance.

Cease and desist letter

It is therefore important as brand owners to firstly ensure that important brands are protected as registered trade marks, which are valid and are not allowed to lapse. They should also actively monitor the market for unauthorised use of their trade marks. Immediate action should be taken as soon as infringement is detected. A warning shot in the form of a cease and desist letter would usually be the first step. In many cases, this is fruitful and there is cessation of unauthorised use. Inaction on the part of the trade mark owner could prove disastrous. It could result in their rights being weakened and in the worst case scenario, result in the infringer being able to rely on the defence of acquiescence. It is also important for brand owners to continuously monitor new trade mark applications in order to assess if the later marks are proving too close for comfort. These applications can be attacked by way of opposition as soon as they are filed. Constant vigilance is imperative to maintain the integrity of your brand.

This would also be an opportune time to remind producers of lookalike products or companies which may be inadvertently stepping on brand owners toes – by using trade marks which are identical or similar to someone else’s earlier rights or indeed using packaging which is similar to a competitor’s earlier packaging – that there is increased vigilance in the marketplace. You may find yourself in hot water even if the unauthorised use was unintentional. This could turn out to be more costly and less profitable in the long run. Always remember to protect your good name. Don’t forget that trade marks can last forever as long as they are properly used and guarded well.

Sumi Nadarajah is a qualified Irish and community trade mark attorney. She manages the trade mark portfolios of a diverse range of Irish and international clients particularly FMCG companies, assisting with their trade mark prosecution and branding strategy. She also advises on domain name protection.



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