When your brand is banned

Wayne Beynon
March 28, 2013

Wayne Beynon, one of a team of Media and IP lawyers at Cardiff and London based law firm, Capital Law, talks trademark infringement.

The thorny topic of trademark infringement is a story that regularly rears its ugly head on the news and business pages, with companies both local and international often falling victim to trademark violations, or contravening the strict UK intellectual property guidelines that act as the legal yard stick on the matter.

In a nutshell trademarks are intended to indicate the origin and quality of particular goods or services. If you use someone’s registered trade mark (or a trade mark similar to it) to promote goods or services which are identical or similar to the goods and services for which it has been registered – you may be guilty of trademark infringement.

Typically, trademark infringement occurs where a individual or company wishes to take advantage of the good will and reputation attaching to the name or brand of established players within a particular market – the intention being that those purchasing the goods or services will purchase from the infringing party in the mistaken belief that they are actually acquiring the goods or services of the trademark owner.

Furthermore where the registered mark has a significant reputation, for example it belongs to a global household brand, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. A recent example of this is the case of Facefood, a Cardiff juice bar.

Based in the Roath area of the city the Facefood juice bar has a shop front that bears a striking resemblance to the Facebook logo and screen icons. Whilst the vast majority of the public would realise that the Cardiff juice bar had no affiliation with the global social networking giant, it could be argued that the fact that the shop bears such a likeness to the Facebook logo gives it an unfair advantage as it rides on the coat tails of Facebook’s universal profile.

A fact that even the owners themselves have acknowledged, who have gone on record as stating that the shop has created quite a buzz since its opening late last year, with customers taking photos and (rather ironically) sharing them on social media platforms.

Facebook are said to be aware of Facefood and are looking into the situation, although the brands website makes clear its comprehensive trademark policy.

“Use of the Facebook trademark or something confusingly similar in your company name or domain name, even in connection with goods/services that are arguably unrelated to those offered by Facebook, can both create consumer confusion as well as dilute the distinctiveness of the Facebook brand and weaken Facebook’s trademark rights.”

Another David versus Goliath trademark infringement situation that recently hit the headlines (albeit one that is not quite as blatant as the Facefood example), is the case of Artisan Brewery, a Cardiff based micro-brewery that has been told it can no longer sell drinks under the Bare Naked Beer banner by drinks giant Pepsi.

Two years ago PepsiCo, the second largest food and drink manufacturer in the world, said the registered trademark on Bare Naked Beer was too similar to the Naked Juice fruit drinks that it makes. And in November 2012 a court ruled in Pepsi’s favour.

PepsiCo owns 22 products, including Mountain Dew, Gatorade, Tropicana and 7Up, which generate annual sales of over $1bn each. In 2007 the company acquired Californian juice and smoothie maker, Naked Juice which now sits alongside global household brand names on Pepsi’s product portfolio.

In contrast, Artisan Brewery, run by Simon Doherty, produces nine beers which are produced seasonally and can only be purchased directly from the company’s Pontcanna location, or a few South Wales shops.

Nevertheless, and despite the disparate circumstances of each company, PepsiCo clearly believed there was a case to be won and contested Artisan Brewery’s trademark application because beer and soft drinks fall under the same category of registration under Section 32. The rest is history.

Whatever the perceived morality of this case, and ignoring whether or not PepsiCo genuinely believed the Bare Naked Beer brand actually posed a threat to its own Naked brand of drinks, in purely black and white legal terms Artisan Brewery contravened trademark law by blurring the distinction between the ‘Naked’ drinks brand name associated with the PepsiCo corporation.

A case such as PepsiCo v Artisan Brewery effectively demonstrates the clear cut nature of the law on the issue of trademark infringement. There is no room for sentiment when it comes to intellectual property, even when nearly everyone is rooting for the underdog.