Waterfront Solicitors Associate Phil Leonard discusses the options facing SMEs when big companies infringe on their trademark.
Intellectual property rights, such as registered trademarks, are not just the tools of big companies. In fact, quite the contrary. Such rights can enable SMEs to stand up to the largest companies in the world, protecting their vital business interests, even in the rarefied arena of High Court litigation.
This was shown in the recent case of Bentley Clothing v Bentley Motors which should give confidence to SME companies that, armed with a strong case and specialist IP lawyers, they should well be able to prevail against the much bigger companies who have more resources (and often more aggression!).
In this case, the illustrious luxury car brand, Bentley Motors, was intent on using its trademark as the brand for its range of clothing and headgear.
Why couldn’t it?
Bentley Clothing (or more precisely Brandlogic Limited and Bentley 1962 Ltd), a small family-run, company, selling clothing under the brand ‘Bentley’ was the owner of prior registered trademarks in the word “BENTLEY” and the below logo in class 25, which covers clothing and headgear:
Bentley Clothing had no issue with Bentley Motors using the “B-in-wings” symbol (i.e. the top half of its trade mark) on its clothing, but did resist its use of the word “BENTLEY” as it infringed its registered trade mark rights and, clearly, was a significant commercial threat.
After making numerous attempts to come to an amicable arrangement with Bentley Motors over the course of almost 10 years Bentley Clothing commenced proceedings against Bentley Motors for trademark infringement back in 2017 and…after going all the way to the Court of Appeal…has now won!
And this is not a one-off. There have been other recent cases where a smaller business has successfully taken on much bigger entities for trademark infringement and come out on top, such as the small “Glee” Comedy Club defeating the media behemoth 20th Century Fox in relation to its use of the mark GLEE for the famous TV show.
What should you do if a big company infringes on your trademark?
SMEs should be aware that there is a specialist court, operating as part of the High Court of England and Wales, which caters specifically for small and medium sized companies who have intellectual property disputes namely the “Intellectual Property & Enterprise Court” (or “IPEC”).
This court offers a more streamlined procedure and costs capping protection (maximum £50k for the trial on liability), so that SMEs can take on the corporate behemoths, without necessarily risking their entire existence.
Additionally, SMEs should bear in mind the following “three top tips” with respect to their brands:
- Look before you jump! Consider conducting some clearance searches before committing significant funds to a new brand. Some modest up-front investment can prevent big problems in the future. (In a worst-case scenario, infringers can be forced to abandon a brand, in addition to being left with a big bill.)
- Don’t let someone nip in there before you! Subject to the results of the clearance search, move promptly to register a trade mark in the appropriate territory and for the relevant goods and/or services.
- Get your free rights! Don’t forget about other IP rights (such as copyright and design rights). Copyright is an unregistered right, which comes into existence automatically to protect qualifying works. Remember to get ownership of all such “IP rights” from any third party commissioned to come up with a new design (such as graphic designers). An easy way to do this, is to get a signed document from the third party agreeing to transfer all IP rights upon full payment under the contract.