M&S removes T-shirt after ‘ripping off’ London craft beer pub’s name

The giant retailer, Marks & Spencer, removed a brewery themed garment from sale after being accused of ‘ripping off’ a London craft beer chain brand.

Martin Hayes, the founder of Craft Beer Co, set up in Clerkenwell in 2011 was surprised to hear that a £16 T-shirt was on sale with his pub’s name in graphic print. Martin pointed out the use of its name to M&S in a tweet, attracting the public’s attention immediately, especially since the Colin the Caterpillar feud between M&S and Aldi. M&S responded to confirm that they have removed the item from sale while the accusation is being investigated.

A M&S spokesman said: “We take intellectual property very seriously and, while the t-shirt was designed in good faith, we’ve taken the decision to remove the product from sale so we can investigate further.”

Martin confirmed to the BBC that Craft Beer Co will not be taking any legal action and confirmed “I’m not angry about it, but it is a little annoying”. He also added “We’re a relatively small business so I don’t think we’ll be taking on a PLC. This isn’t Aldi versus Marks and Spencer“.

Aldi, who lost the infamous public legal battle with M&S after being accused of copying the M&S’s iconic ‘Colin the Caterpillar’ trademark, could not resist joining in on the tweets. Despite Aldi reaching a confidential settlement out of court with M&S, the German retailer amusingly responded to the Craft Beer Twitter campaign by tweeting “OH HOW THE TABLES HAVE TURNED.”

Passing Off

A claim in passing off is about stopping the infringer from selling their goods or services by making unfair use of the claimant’s reputation. A common scenario is where the defendant adopts some mark, sign or other distinguishing feature; for example the appearance of the packaging of the goods which customers associate with the claimant. They use this, or something confusingly similar to it, for their own goods or services, with the result that customers are misled into thinking they are buying the claimant’s product. To establish this right of action, the claimant must show three elements often referred to as the ‘classic trinity’ first established in the House of Lords decision of Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 WLR 491 (also known as the Jif Lemon case). The three elements are:-

1. Goodwill
2. Misrepresentation
3. Damage

Goodwill refers to the reputation of the business whereby the goods or services are recognised and distinguished from competitors e.g. the plastic lemon in the Jif Lemon case mentioned above. The distinguished feature can also be a name, logo, shape, style or packaging e.g. the classic Coca-Cola bottle.

The second element is misrepresentation leading to confusion. The defendant misrepresents his goods or services, either intentionally or unintentionally, where the public may have the impression that the offered goods or services are those of the claimant. There must be a misrepresentation made by the defendant during trade. In the Jif lemon case, the misrepresentation was the use of the plastic lemon. In most passing-off cases, there is a deliberate attempt by the defendant to ‘ride on the back’ of the claimant’s success.  A well-known example is the Colin the Caterpillar case also referred to above, where M&S claimed that the Cuthbert cake product allowed Aldi to “ride on the coat-tails” of M&S cake’s reputation. It is not enough that there is confusion between the claimant’s and the defendant’s product. Customers must believe that the defendant’s products are associated with the claimant and must lead to confusion of customers or potential customers.

The third element is that the claimant must show damage or the likelihood of damage. The main types of damage are loss of profits or loss of reputation. It follows that if you make a potential customer or recipient of your services think you are another party, that person has a right to claim compensation for losses suffered by the deception. Remedies for passing off can include an injunction, damages and/or an order to cover up marks or repackage. A claim in passing off is now often used as an additional remedy to trademark infringement claims, as it is more flexible in approach than a trademark claim.

Evidently, accusations in relation to the use or misuse of logos has become an increasingly litigious area over the last few years. Unfortunately, there is no one size fits all approach when it comes to dealing with copyright infringements. However, there are several key brand protection strategies for brand owners to consider:-

• ensure you have adequate intellectual property protection: alongside registering your trademark and designs, brand owners should ensure appropriate measures are in place to protect their domain names, app icons and other elements of a brand’s online presence.
• monitoring the market: brand owners should consistently monitor the market, especially the online market for unauthorised use of trademarks and/or product names.
• Swift Action: brand owners should be prepared and equipped to take action at the earliest opportunity and therefore it is imperative that they are familiar with the various notice and takedown procedures available e.g. cease and desist letter as well as collating documentary evidence of alleged infringements to substantiate any claims. In some instances, it is more appropriate to send correspondence i.e. letters of claim before formally commencing proceedings, with a view of resolving disputes in this way and thereby avoiding recourse to court proceedings.
• the power of social media: be cautious of getting caught in a social media battle, while many businesses may see litigation as the only option, it is important to consider with whom you are dealing with and the potential fallout it may cause.

For further advice and assistance please contact our Business Services Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk