This article is taken from Paul Howcroft’s blog Art Law London
Dream Bags and Jaguar Shoes were adjacent shops in London’s Shoreditch, an area that has become a trendy and artistic neighbourhood in recent years. The two shops were acquired in 2001, knocked into one and turned into a café, bar and art gallery. The old shop signs were left in place and the venue used the name “Dream Bags Jaguar Shoes”, but known as “Jaguar Shoes” to visiting hipsters like Natalie Portman, Amy Winehouse, me and Beyonce, as the entrance is under that sign.
However, when the owners recently decided to register “Jaguar Shoes” as a trade mark, the car makers Jaguar Land Rover filed an “Opposition”, to block it. No doubt that was a surprise, but it didn’t surprise my hip yet hardened intellectual property partner Eddie Powell, who I mentioned it to. According to Eddie, “…this is another example of a small business running into the brick wall that is the world of big brand protection. Sometimes the little guy wins (remember the failed attempt by KFC to stop a pub advertising its Sunday lunch as a “bargain bucket”?) but most of the time a big brand has taken steps to protect its name through registration of their brand as a registered trade mark and can stop people from subsequently using or registering the same or similar mark or name in the same areas. If they can prove that the brand reputation is substantial, that right can extend beyond the types of products actually sold under that brand – even to hip and trendy art collectives.”
The serious point here is that a new business such as an art gallery should check its proposed trading name in advance, rather than later face the choice of either seeing its valuable brand exploited by others or starting again and developing a new brand.
Paul Howcroft, Partner, Fladgate LLP (firstname.lastname@example.org)