Getting tangled in The Ivy

 A recent dispute concerning the use of the name “THE IVY” by a restaurant in Glasgow has served as a useful reminder of the value in carrying out trademark clearance searches before starting to trade.

Last year, the owners of “Glasgow’s Ivy Bar and Restaurant” received a letter threatening it with trade mark infringement from the owners of The Ivy, the famous restaurant in London, which is owned by Caprice Holdings.  The Glasgow restaurant was forced to change its name and according to The Herald the estimated costs and losses associated with this rebrand are around £30,000.  £20,000 of this is attributed to lost business and £10,000 was incurred in creating a new website, signage and other rebranding for the Glasgow restaurant. 

The law on trade mark infringement

In the UK, a registered trade mark is infringed if a person uses without the owner’s consent in the course of trade (i) an identical mark for identical goods/services and/or (ii) a similar or identical sign is used for similar or identical goods/services which results in actual or likely confusion amongst customers as to the origin of the goods/services and/or (iii) where use of a sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of a famous trade mark.

Caprice Holdings could have had claims against the owners of the Glasgow restaurant under all three heads.  UK case law states that descriptive or semi descriptive elements such as the words “Glasgow”, “Bar” and “Restaurant” are not considered to be part of the sign or real brand being used.  On that basis Caprice Holdings could have claimed trade mark infringement for identical sign/identical services being provided under the key brand name the “IVY”. Even if that was not the case and the trade marks were not found to be identical, the similarity of the respective trade marks and the fact that they are both are used to provide identical services means that there was a strong likelihood of confusion.  Any differences between the respective trade marks are not likely to be sufficient to distinguish Glasgow’s Ivy Bar and Restaurant from The Ivy.  In addition to those arguments, it is quite possible that Caprice Holdings would be able to show that THE IVY is a famous trade mark with a very well known reputation for restaurant and bar services and that by using “IVY” in “Glasgow’s Ivy Bar and Restaurant” they are seeking to ride on the coattails of the famous trade mark.  All such activities could have supported a claim of trade mark infringement.  In addition there could have been a claim of passing off to protect the unregistered trade mark/goodwill built up in THE IVY.  The existence of the trade mark registration however would have made the claim easier to establish.

Prevention is better than cure

This dispute serves as a useful reminder that prevention is better than a cure when it comes to trade mark infringement.  Businesses should carry out appropriate clearance searches before selecting and using a brand or trading name and it could save them having to carry out a time consuming and costly rebrand further down the line.  Although not always fully comprehensive a quick check of the free online trade marks database should have revealed that Caprice Holdings Limited owns a community trade mark (number E6057517) for THE IVY  which is registered in the UK for amongst other things, restaurant, bar and catering services.  Even a simple Google search for “IVY” brings up the London restaurant as the first search result and it is likely that anyone operating in the restaurant scene would be aware of the famous reputation of The Ivy.

If you have any concerns about a business or trading name that you or your company is using or plans to use and you wish advice on this please contact one of our IP team.  One of the options we can discuss with you is our IP Audit Toolkit which can help to identify your intellectual assets and develop strategies to use them.

Mark Cruickshank

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