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Trade mark disputes: there's a storm brewing

Daniel Kelly, an intellectual property specialist at law firm Shakespeare Martineau, examines the battle for trade marks among UK breweries

Daniel Kelly Shakespeare Martineau

Over the last year, there have been a number of trade mark disputes in the brewing industry, from Brewdog v Doghouse Distillery, to Coast Beer Co v Coast Drinks. Research from UHY Hacker Young has found that there are already more than 3,000 breweries in the UK, and as more appear, the chances of trade mark registration crossovers will only increase.

In a crowded marketplace, businesses must think outside of the box to differentiate themselves, often through distinctive branding and packaging. For those aiming to stand out from the crowd, trade marks are vital, protecting not only the brand's name, but also particular products, slogans and logos.

There are a number of benefits that come with owning a trade mark, including having exclusive rights to use the mark in relation to the goods and services that it covers. This enables breweries to take legal action against competitors or counterfeiters that get too close for comfort. The mark will also show up on official searches when other breweries or companies are choosing their brand names and appearance, reducing the chance of competitor crossover. Trade mark owners can also sell and license the brand, as well as take out financing secured against the mark.

Before applying for a trade mark, breweries must consider certain factors that will impact on its usage. First of all, brands must decide what they would like to register, whether a word or phrase, a logo, or a combination. Whichever option they choose, it’s important ensure that it is not overly descriptive of the goods or services that it is related to and that it is not a generic phrase, for example ‘IPA’.

Once settled on the mark, the brand must then decide which types of goods or services will be covered by the registration. For breweries, the obvious option is goods relating to beer, however they may also want to consider merchandise and services for providing food and drink. Each good or service is allocated to a trade mark ‘class’ and must be specified on the application.

Then there is the matter of territory. Will the trade mark cover the UK, Europe or other locations worldwide? This ultimately depends on where the brewery intends to trade. If the business plans to sell the product in the UK alone, then a mark that covers further afield would not make commercial sense. However, if the business has plans to expand where it trades as it grows, then it may be worth considering from the outset.

Final checks should then be made before the application is submitted. Breweries should search for existing similar or identical trade marks via the tools on the UK Intellectual Property Office website. Should the business be seeking to apply for the trade mark outside of the UK, similar search tools are available in other territories. If budget allows, a proper clearance search by a suitably qualified professional will be a sound investment.

It can also be wise to carry out a more general search online and on social media to see if a business is using a similar unregistered mark. An opposition can still be brought against a trade mark application by a business even if they don’t have a registered trade mark themselves. The consequences of infringement can be both financially and reputationally damaging, so thorough checks are essential.

For brands that believe their trade mark has been infringed, an intellectual property professional can advise on the next steps to take. Initially, a cease-and-desist letter should be sent to the infringing company, as this may be enough to stop them from using the mark. Court action should be a last resort for businesses, as it can be a long and costly process. However, if successful in court, there are various financial remedies available such as an injunction and damages, as well as a contribution to costs.

With the number of breweries in the UK growing by 216 in 2020, even in challenging trading conditions, it’s clear that the marketplace is only going to get more crowded. As a result, trade marks have become increasingly important for brands wishing to fill the pint glasses of consumers.

8 October 2021