Protecting your brand. James Graham reports.

Sometimes it’s hard to write a descriptive passage without attracting the opprobrium of vigilant trademark lawyers. It would be an unusual sentence, but something like, “the chief executive went rollerblading around the portakabin in lycra”, would surely attract strongly worded letters reminding the editor of this publication that Rollerblade, Portakabin and Lycra are all registered trademarks.

Rollerblade staunchly defends the identity of its product, insisting on the use of “inline skates” as the generic term. Likewise, York-based Shepherd Building Group – inventor of both the Portakabin and the Portaloo – wants to prevent its marque becoming generic, like Hoover and Frisbee, thereby losing its brand value.

EasyGroup, owner of easyJet, is even more attentive. It routinely challenges the right of others to use the word “easy” in their brands. Four years ago, a pig farmer’s wife from Fadmoor, North Yorkshire was threatened with legal action after diversifying into the aerospace industry and starting Easy Rentaplane.

Moreover, in July EasyGroup was once again in court challenging BSkyB over its internet service provider, Easynet.

EasyGroup’s Della Burnside told The Lawyer: “EasyGroup cannot permit others to use the ‘easy’ name without the group’s rights being prejudiced. It follows that no use should be made of the name ‘easy’, or anything similar to it, without our consent.”

Not all judges agree, though. Easyart, Easybroker and Easypizza have all been challenged to no avail and each lawsuit damages both the group’s, and chairman Stelios Haji-Ioannou’s, public image. “Is it good PR? I don’t know,” says Jason Dainty, an intellectual property, specialist at law firm Irwin Mitchell. “But it’s good trademark practice.” Many other businesses take a more relaxed approach to their brand value, something which they often live to regret.

When cash is tight, spending up to £3,000 on trademark registration is a low priority and is often put on the back burner or forgotten about altogether. Cost should not be an issue, argues Nick Rudgard, a legal director at the Manchester office of law firm Addleshaw Goddard.

“It’s inexpensive to register a trademark or design but it will cost tens of thousands to fight a court case. People ought to be more proactive.” Some rely on protection through common law, through which it can be argued an unregistered trademark has generated goodwill over time.

But this means the business must prove its reputation, prove it has been misrepresented and show it has suffered damage. “It’s always much easier to take action when you have a registered trademark,” says Claire-Marie O’Grady, an associate in the IP team of Eversheds in Leeds.

In 2003 one of Eversheds’ clients, which they refused to name, discovered its products were being counterfeited in China – a notorious intellectual property black hole. Lawyer and client decided not to act, preferring the softly, softly approach, but the counterfeiter has not held back. It has since registered the UK company’s trademarks and internet domain names in China and opened a shop in Dubai.

“Three years later we have got a much bigger issue,” says O’Grady. “Subject to economics, companies should register their brands early in key jurisdictions and tackle infringers quickly. Companies that do hold back may want to save on legal fees and may consider a small infringement to be insignificant.

However, the view from the legal community – and one shared by EasyGroup, Rollerblade and Shepherd – is that action must be taken because every infringement, no matter how small, is an erosion of the brand. This approach was taken by the catering arm of Granada Group (latterly Compass) as it sought to protect its chip shop chain Harry Ramsden’s. By 2000, Harry Ramsden’s had 70 outlets throughout the world – a far cry from its humble origins when it was founded in Guisely, near Leeds, in 1928.

But Granada still took action against a small chip shop owner in County Durham who was alleged to have infringed the trademark. Harresh Ramadan had been running an Indian takeaway but converted the building to a chip shop and renamed it “Harry Ramadan’s”. He used a sign above the shop illustrated in sweeping letters, similar to those used by Ramsden’s.

Although Harry Ramsden never protected his name, the subsequent owners of the business did and took a dim view of Harresh’s change of direction. “My name is Harresh Ramadan and everybody calls me Harry,” he told reporters. “Haven’t Harry Ramsden’s got bigger fish to fry?”

But infringement isn’t just about copying a well-known name. One of the biggest stories in the gaming world last year was a dispute between two fruit machine companies, Electrocoin and Coinworld. Electrocoin claimed Coinworld was infringing its trademarks on the terms “BAR-X” and “OXO” by using the symbols “BAR”, “X” and “O” on the reels of its gaming machines. The case was settled when Coinworld agreed to licence the symbols. Barry Quest, a partner at Manchester patent specialist Wilson Gunn represented Coinworld. He also fought to win coinworld.com as a domain name after it had been taken by another competitor.

“Internet-related cases are increasing,” says Quest, who went through the Geneva-based World Intellectual Property Organisation’s (WIPO) domain name resolution service to settle the dispute. The action succeeded because the company had a registered trademark.

Another client discovered a rival was using its trademark as a key word for Google Ads, so anyone searching for Quest’s client would be directed to its rival. Wilson Gunn threatened trademark infringement proceedings and used Google’s complaints procedure. “Not only are there new ways of infringing, but also new ways of dealing with it,” says Quest. These so-called cyber-squatting cases are not always so clean cut. In 1999 a ruling against the One in a Million group, which had registered domain names such as ladbrokes.com and burger-king.com for the sole purpose of selling them on, sent a clear message to cyber-squatters.

But the mobile phone retailer Phones4u was involved in a long-running dispute with Abdul Heykali who registered the phone4u.co.uk domain name in 1999. The High Court ruled in his favour only for the Court of Appeal to overturn the decision in May. There had not been a trademark infringement, said the judge, but the registration of phone4u.co.uk had created “an instrument of fraud” – a term first used in the case against One in a Million.

When it’s not a war of words, the dispute comes down to colour. The champagne maker Veuve Clicquot has recently won exclusive use of its shade of orange – but only in relation to champagne sales. This is the key. A general claim to a colour or word is not permitted, but is allowed in connection to a certain service or sector. “Egg”, for example, is allowed for an internet bank, but would not be granted to a poultry farmer.

So when Stelios branched into the mobile phone business with easyMobile, his group’s corporate colour of orange clashed with that well-known mobile company – Orange. Orange, of course, would not be granted trademark rights if it branched out into selling fruit.

---