Trouble brewing at Marks and Spencer

London pub chain The Craft Beer Co. has accused Marks & Spencer of ripping off its brand name (which is not trade marked) on a new T-shirt which shows the words "Craft Beer Co." on the front and back.

M&S stated on its website that "the St Michael Brewery-themed graphics on the back and chest add a distinctive theme". One of the Craft Beer Co. founders said that he thought M&S should withdraw the T-shirt anyway, as, in his view, some of the language used in the graphic was sexist (e.g. "proper good beer... for proper good blokes”).

The Craft Beer Co. took to Twitter to vent its frustration with M&S but it is not, reportedly, planning legal action, because it feels it is too small to take on a massive company like M&S. That social media pressure may have worked, as M&S have just withdrawn the offending T-shirt from sale.

There may be another reason why The Craft Beer Co. didn’t want to pursue M&S: the words “The Craft Beer Co.” are not actually trade marked. Moreover, the Intellectual Property Office might reject those words as a trade mark, because they simply describe what the company does: it produces and sells craft beer. Trade marks need to be distinctive, and cannot just describe exactly what a business is doing. A shoe company could possibly trade mark itself as “Craft Beer” since it neither makes nor sells craft beer, or as “Nike” since that is the name of a goddess and does not describe what the business does, but not as “A Shoe Seller”.

The bottom line is that you can’t sue for trade mark infringement if you don’t have a registered trade mark. Potentially The Craft Beer Co. has an action for passing-off against M&S, which is different to a claim for trade mark infringement and is almost always more difficult to prove. The Craft Beer Co. would have to show that M&S was pretending to be The Craft Beer Co. and was doing so in order to gain commercially. M&S is a massive brand and it was not attempting to pass itself off as a small craft beer brewery. The point behind the slogan on the T-shirt was simply a hint at a relaxed lifestyle and a nod to a beer which does not need to exist for the shirts to be desirable.

Litigating against a large company does not necessarily mean huge legal costs, and in a trade mark dispute, if you have a registered trade mark, it should be possible to persuade the larger company to settle prior to the expense of litigation, especially if it is obvious that David should, on a balance of probabilities, win any legal action against Goliath.

If you feel that someone is ripping off your trade mark or brand name, or is passing off their business as yours so as to ride on your coat tails, then you may have grounds for seeking compensation from them.

If you’re choosing a brand name to trade mark, you may wish to consider whether or not it is too descriptive of what you actually do. The more distinctive it is, the better, for trade mark success. “Lego” is distinctive and an invented name. “Small plastic bricks” is much too descriptive and will not do. Whatever you do, though, get your trade mark registered and then you will be in a much stronger position.

If you’re considering what to do, speak to a specialist lawyer. We have expertise in intellectual property infringement matters, including trade marks, and we can help you work out how best to achieve your objectives at the best value to you.

For more information on a no-obligation, confidential basis, please contact Brian Levine on 01935 846 258 or email him at brian.levine@battens.co.uk.