A Question of Size: When David Meets Goliath in the Trademark Arena
It doesn’t matter what size your business is, your brand matters. Whether you are a global powerhouse or a small local business, the way you are viewed by your target audience and the images and words they associate with you are important. That’s why intellectual property protection is valuable to all companies, not just big brands.
Every business that has registered its trademarks and designs has the right to protect them, but sometimes the resulting court cases can appear imbalanced. When a large business takes on a smaller one – or vice versa – a so-called “David and Goliath” situation unfolds.
There have been numerous examples of David and Goliath-style battles over the years, and they can be protracted affairs.
One long-running example is the case of Manchester-based family-run Bentley Clothing versus Bentley Motors. The battle began in 1998 when Bentley Clothing contacted Bentley Motors to contest its use of the word “Bentley” on clothing sold by the luxury car brand. Bentley Clothing has held the trade mark “BENTLEY” in class 25 (clothing, footwear, headgear) in the UK since 1982. After years of failure to reach an agreement, including an unsuccessful attempt by Bentley Motors to cancel the Bentley Clothing trade mark, the case went before the High Court in 2017. Finally, in 2020, the High Court rejected Bentley Motors’ appeal against the 2019 judgement that it had infringed on Bentley Clothing’s marks. The outcome was a victory for the small company, but it came at significant cost and pressure.
In contrast to the Bentley case, it is perhaps more typically the larger party that raises infringement concerns in the course of its brand monitoring programme. This was the situation in the case of HUGO BOSS versus BOSS BREWING company – a small South Wales based brewery. The global apparel brand issued a cease-and-desist letter to the brewery, objecting to its use of “BOSS” in two of its beers, BOSS BLACK and BOSS BOSS.
What happened next was unexpected. The situation came to the attention of comedian and television consumer rights champion Joe Lycett, who embarked on a campaign to highlight what he saw as the unfair targeting of a small business by a larger company. As part of his campaign, he memorably – albeit temporarily – changed his name to HUGO BOSS. Ultimately, the brewery and apparel company came to an agreement that saw the brewery modify the names of the two beers to Boss Brewing Black and Boss Bossy. HUGO BOSS made a statement on the issue that you can read here.
In another case, a Bath sports studio found itself in turmoil when it received a cease-and-desist letter from Mad Dogg Athletics, owners of the “Spinning” trade mark in classes 28 and 41, covering exercise equipment and the provision of exercise training and information related to exercise training. The studio had named itself “Spin Village”, under the misapprehension that “spinning” was a generic term for indoor bicycle-based exercise. On applying to register the name as a trade mark Spin Village drew the attention of Mad Dogg Athletics, which consequently acted to defend its mark – and combat its increasing genericism. While Spin Village owner Charlie Bird maintains that the fight against genericism for “spinning” has been lost, he was nevertheless reluctant to go to court on the matter, opting instead to change the studio’s name.
Lessons from the David and Goliath Arena
As the above cases serve to indicate, there are various issues to consider for both “Davids” and “Goliaths”.
For smaller businesses faced with infringement of their brand by a larger organisation, the time and cost of bringing a case are likely to be considerable, even when there is a good chance of success under trade mark law. Bentley Clothing may have emerged the victor in its case, but a family spokesperson described the whole process as “ruinous”. There is also likely to be a significant emotional toll when a small organisation is forced to defend itself.
That said, small firms should not be intimidated and reluctant to defend their registered rights. Not doing so undermines the value of obtaining trade mark registration. At CITMA’s spring conference Sara Sefton and Jeremy Blum of Bristows will present a session on advice for small firms when facing larger opponents, drawing on their successful experience in this area which is guaranteed to offer valuable insight.
In cases such as that of Spin Village, it is really worth doing your research before you develop your brand. If the company had sought the advice of a Chartered Trade Mark Attorney to conduct searches of the UK register prior to developing their brand collateral and marketing materials, they could have avoided the cost and disruption of having to rebrand. A Chartered Trade Mark attorney can advise on marks that will succeed and those likely to face opposition from registered trade mark owners.
The power of the media
Smaller organisations that find themselves in a David and Goliath scenario may find that the media is a source of support and potentially a tactical tool to use to gain public support for their case. On the other hand, larger organisations should factor potential media (and social media) response into their strategy and approach when defending against infringement with a substantially smaller opponent.
David and Goliath stories are often popular with media outlets, as they drive audience engagement and speak to the public’s sympathy the underdog. Central to the challenge for large businesses is that the average consumer does not have a good understanding of the nuances of intellectual property rights and the scope of protection (nor do most media outlets, incidentally). Combined with the speed at which stories can go viral through social media, a brand can find itself very much on the back foot and facing significant brand damage when stories of “bullying” hit the headlines.
This doesn’t mean that large organisations should rein in their brand protection programmes, far from it, but they do need a strong message and strategy to manage media and public interest. It is interesting to note, for example, that HUGO BOSS succeeded in defending its brand despite media pressure, because it stuck to the limits of what trade mark protection allows and worked to find a mutually acceptable solution. The general public might not understand why the modifications to BOSS Brewing’s products were needed, but in brand protection terms, the outcomes was acceptable.
The public cease-and-desist letter
There have been several notable instances of creative use of the case and desist (C&D) letter to raise the issue of brand protection while still acknowledging the defendant and perhaps creating some positive publicity at the same time. When actor Bill Murray used a Doobie Brothers track in an ad without permission, the band’s attorney wrote a silly-but-serious C&D letter that resulted in good publicity for the band. Similarly, Netflix hit the right note when objecting to a ‘Stranger Things’-themed pop up bar in Chicago, writing in the style of the show and requesting only that the bar didn’t extend its opening period beyond the initial six-week licence.
Mismatched trade mark battles do not always attain truly biblical proportions, but they do present interesting challenges for both parties. We are looking forward to attending the CITMA session on 17th March. We’ll also be attending the CITMA spring conference as sponsors and would love to meet up. Just contact Kasia to set up a meeting.