High street retailer ‘Marks and Spencer’ (herein referred to as ‘M&S’) has withdrawn a t-shirt from sale after a London based pub chain drew attention to similarities to its branding. The Craft Beer Company Ltd operates several pubs and trades under the name ‘The Craft Beer Co.’ The t-shirt in question features branding for the fictitious St Michael Craft Beer Company with the words ‘CRAFT BEER CO.’ in bold at the centre of the logo.

Martin Hayes, co-founder of The Craft Beer Company Ltd drew attention to the similarity on social media, and mused whether he would receive a cheque for royalties from M&S. In response, M&S swifty removed the shirt from sale, commenced an investigation, and stated that it takes intellectual property very seriously.

While Mr Hayes has stated that he has no desire to litigate in this case, and M&S has indicated that it wishes to resolve this matter amicably, this case does highlight a number of interesting points of intellectual property law. When a company has registered a name or logo as a trade mark, unauthorised use of that trade mark by a third party is known as trade mark infringement, and there is legislation which upholds the rights of the trade mark holder and entitles the holder to a number of remedies. The Craft Beer Company Ltd does not appear to have registered a trade mark, but unregistered trade marks are still protected by common law, albeit to a much lesser degree. The unauthorised use of an unregistered trade mark is known as ‘passing off’. Pursuing a claim for passing off is more difficult than pursuing a claim for trade mark infringement, because the onus is on the claimant to show that: 1) there is goodwill attached to the brand; 2) the passing off has led or is likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the claimant; and 3) there is damage to the claimant as a result of the consumer confusion.

Fortunately in this case, M&S has withdrawn the offending product, but all too often disputes of this kind can lead to protracted litigation and mounting costs for both parties. The advantages of registering a trade mark cannot be overstated, therefore, because the trade mark holder’s rights are stronger and easier to enforce, meaning significant savings in terms of time and money.

If you want to protect your branding and IP and avoid a costly intellectual property dispute, please contact Rhys ap Gwent at Morgan LaRoche Solicitors.