It’s great to see IP, and in particular trade marks, making the national news and being talked about on social media, especially in Food & Drink, a sector we know and love so well.
But, what has caused this spike in public interest and reporting? Is it simply that there are more disputes? Certainly, the Food & Drink sector is bigger than ever - in 2021, the total UK consumer expenditure on food, drink and catering was £240 billion. That’s a lot of brands and a lot of potential clashes. Coupled with the fact that F&D is so accessible, it’s perhaps not surprising to see so many brand owners in this sector frequenting the social media battlefields. But surely there’s more to this than just over-crowding.
Are brand owners getting more active on social media? Or are marketing teams getting more creative with their campaigns? Or is it just that the public are more aware of trade marks and branding than ever before?
Whatever the cause, and very likely it’s a combination of all the above, it’s absolutely imperative that brand owners have total understanding and control over what their marketing, PR and legal teams are doing to ensure a joined-up, maximum-return approach to trade mark disputes. Getting it wrong can be disastrous. By contrast, a cleverly worked PR campaign can snatch victory even from the jaws of a legal defeat…
In this article, we take a look at some of the F&D disputes which have hit the press in recent years and see what lessons can be learned.
The dreaded @ symbol…
In days gone by, the first sign of trouble would arrive in the form of a cease & desist letter from lawyers through the post. And indeed in the most significant disputes, especially those which are very likely headed to court, or those where public reaction is less of an issue, this remains the case.
In other situations, though, you may just as well find yourself tagged in a social media post than receive a letter these days, even in a case of serious infringement. This presents an interesting shift: traditionally, a B2B approach was seen as a softer approach, indicating a lower level of concern by the claimant. Not any more.
But do such posts always achieve the best results for brand owners, and does the ‘case’ on social media accurately reflect the legal position? Perhaps not always, but maybe the legal reality matters less than it once did – and certainly sometimes less than the public pressure to take action quickly or the wider perception of how a dispute has been handled.
KFC used this tactic to great success in 2019 when it launched a campaign to target so-called imitators en masse, which depicted images of -FC shops alongside the phrase “Guys, we’re flattered”. The campaign quickly circulated on social media and received high praise for its non-confrontational approach. However, whilst resulting in some positive PR for KFC and making the general public more aware of the issue, it’s unclear to what extent the campaign actually reduced the number of -FC shops on the market.
David v. Goliath tactics
More recently, we saw Planet Of The Grapes wine bars/shops post a photo of a display by (the much bigger) Laithwaites at an exhibition, captioned “not sure you should be using our company name to sell your wine products?” Laithwaites duly apologized within 24 hours, confirming that it “won’t be seen again”. Great result, speedily achieved and with minimal fuss and hassle for both parties.
Indeed, this kind of public approach continues to have particular appeal for smaller companies whose legal demands might otherwise be ignored or at least not be prioritised by a much bigger third party - especially as they become increasingly aware of their rights and social media powers. This is exactly what happened in 2022 when Bath chocolatier Choc on Choc successfully took to social media following a perceived lack of response from M&S over their concerns about a copy of their “Perfect Match” white chocolate matchsticks – only to secure sales of their product in M&S stores and a promise of future collaborations, amongst other happy outcomes.
Don’t mention the lawyers!
In other cases, even if the approach is made privately not publicly, a lower key, B2B approach can sometimes work better than a full-on approach from lawyers (even if your lawyers have written the wording that’s sent – shhhh!). Again, perhaps this is a sign of brands wanting to present a more human side (even to each other) than in the past, or perhaps it’s just a sign of tightening budgets.
Either way, a B2B approach (whether public or private) can sometimes work well in the first instance, leaving the option of “involving the lawyers” as a useful threat of escalation that can be leveraged to great effect if the initial response is not as co-operative as you might have hoped.
Best (and fairest) foot forward
Whenever an approach is made, whether B2B or by lawyers, it’s critical that the correspondence is written thoughtfully and with particular consideration as to what it will look like if/when it hits the public domain. A hastily dashed off letter or email with little or no regard for public perception could do untold damage to a company’s reputation.
A well-written letter, on the other hand, presenting the author as fair and entirely reasonable, can be highly effective. In fact, when disputes are handled well, there is the chance for both parties to come out smelling of roses.
Hot on the heels of the Colin v. Cuthbert Caterpillar Wars, British retail giant Marks & Spencer found itself again in the spotlight this year, in relation to a dispute concerning their Percy Pig sweets. When M&S approached Hertfordshire based ice cream parlour Fabio’s Gelato, requesting that they removed “Percy Pig” from the name of their ice cream which contained said sweets, the parlour owner was agreeable and even commended M&S’s approach. High fives all round at M&S.
Behind the scenes, of course, there may well have been further legal wranglings and perhaps even some formal undertakings signed by the parlour, but certainly in public the PR battle was at least a draw and perhaps even a win for M&S.
The power of the (social) media – and a dose of humour
And yet there’s always one who’s ready to up the ante and steal even the most positive thunder.
Right after the aforementioned Percy Pig dispute, Lidl grabbed the spotlight yet again with their own approach to the same ice cream parlour, suggesting they would be more than welcome to sell a new ice cream called “Henry Hippo ice cream” (this being Lidl’s own rival to M&S’s Percy Pig sweet). Cue more social media activity by Fabio’s Gelato, this time in favour of Lidl. Clever, arguably; cheeky, probably; effective, certainly.
For sure, in the right circumstances and as long as it’s in keeping with the brand’s image and personality, humour can be used to great effect in trade mark disputes, one of our favourites still being the cease & desist letter sent by Netflix in 2017 to an unauthorised “Stranger Things” bar in Chicago.
So what are the main takeaways?
Well, sometimes the best tips are the oldest ones, namely that some form of clearance search or at least informal check is always wise before adopting any new brand names, taglines etc., to reduce the risk of an issue in the first place.
But that’s to dumb down the complexities of the modern day trade mark dispute.
These days, the situation is much more nuanced and sophisticated and, as we’ve seen, it’s not always about who has the stronger legal position, but rather who can position themselves best when the dispute hits the airwaves.
Some key points to remember are therefore:
No two disputes are the same – there are multiple ways “to skin a cat” and it’s all about deciding (in conjunction with your lawyers) which is the best approach given all the circumstances;
Key determining factors will include: the nature and size of the other party, your brand’s personality, the likely public interest, the outcome and speed of reaction you’re after – and of course (but not necessarily first) the legal position;
Whichever route you choose, make sure your legal, PR and marketing teams are closely aligned not just in terms of strategy but also execution – especially if things start to move quickly;
Ensure that any correspondence is written on the assumption it will be made public at some point, giving careful consideration to how it will reflect on you and your business;
On which note: get your lawyers’ input on wording and style, even if you’re going down the B2B route in the first instance (making sure there is in fact trade mark infringement if that’s what you’re alleging, in view of the “unjustified threats” provisions in the UK which could land you in court as the defendant);
Be extra vigilant for any indication that a dispute has, or is about to, hit the public domain and/or go viral;
Move speedily if need be – but never rashly;
Remember that whatever is agreed in public, you may sometimes still need a more formal legal resolution (an agreement, undertakings etc.) behind the scenes to ensure the dispute is properly concluded and doesn’t come back to bite you;
Look on disputes as potential opportunity – not just for positive PR but even new business partnerships.
If you have any questions or for more information, please contact Rowena Tolley, Alicia Nash or your usual Kilburn & Strode advisor.