Daniel Kelly – Trademark litigation: a storm is brewing

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Daniel Kelly, intellectual property specialist at law firm Shakespeare Martineau, examines the trademark battle between UK breweries

Daniel Kelly ShakespeareMartineau

Over the past year, there have been a number of trademark disputes in the brewing industry, from Brewdog v Doghouse Distillery to Coast Beer Co v Coast Drinks. Research by UHY Hacker Young has revealed that there are already over 3,000 breweries in the UK, and as more emerge the chances of trademark registration crossovers will only increase.

In a crowded marketplace, companies need to think outside the box to differentiate themselves, often through distinctive branding and packaging. For those looking to stand out from the crowd, trademarks are vital, protecting not only the brand name, but also particular products, slogans and logos.

Owning a trademark has a number of advantages, including the exclusive right to use the mark in relation to the goods and services it covers. This allows breweries to take legal action against competitors or counterfeiters who come too close for their comfort. The brand will also appear in official searches when other breweries or companies choose their brand names and appearance, reducing the chances of crossover from competitors. Trademark holders can also sell and license the mark, as well as take out financing secured by the mark.

Before applying for a trademark, breweries should consider certain factors that will affect its use. First, brands need to decide what they want to register, whether it’s a word or a phrase, a logo or a combination. Whatever option they choose, it is important to ensure that it is not too descriptive of the goods or services to which it relates and is not a generic term, for example “IPA”.

Once settled on the mark, the mark must then decide what types of goods or services will be covered by the registration. For breweries, the obvious option is beer-related merchandise, but they may also consider merchandise and services to provide food and drink. Each product or service is assigned to a brand “class” and must be specified on the application.

Then there is the question of territory. Will the brand cover the UK, Europe or other places around the world? It ultimately depends on where the brewery intends to trade. If the company plans to sell the product only in the UK, a brand that covers further would make no commercial sense. However, if the business intends to expand where it operates as it grows, it may be worth considering upfront.

Final checks must then be carried out before submitting the application. Brewers should search for existing similar or identical trade marks through the tools on the UK Intellectual Property Office website. If the business is looking to file a trademark application outside the UK, similar search tools are available in other territories. If the budget permits, a search for proper authorization by a suitably qualified professional will be a good investment.

It may also be a good idea to do a more general search online and on social media to see if a company is using a similar unregistered mark. An opposition can always be filed against a trademark application filed by a company even if it does not itself have a registered trademark. The consequences of counterfeiting can be both financial and reputational. Thorough checks are therefore essential.

For brands who believe their trademark has been infringed, an IP professional can advise you on the next steps to take. As a first step, a cease and desist letter should be sent to the infringing company, as this may be sufficient to prevent them from using the mark. Legal action should be a last resort for businesses, as it can be a lengthy and costly process. However, if successful in court, various financial remedies are available, such as injunctive relief and damages, as well as contribution to costs.

With the number of breweries in the UK having increased by 216 in 2020, even in difficult trading conditions, it is clear that the market will only get choked up. As a result, brands have become increasingly important to brands wishing to fill consumers’ pint glasses.

October 8, 2021

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