Recent UK court cases have highlighted how important it can be to look beyond registering plain word trade marks, and ensure there is also protection for other elements, especially words in stylized form, together with images and colours that are used on packaging and/or signage.

As we discussed recently, Thatchers sued Aldi last year for trade mark infringement and won on appeal. Thatchers had registered the appearance of the packaging of their cloudy lemon cider and were successful despite the brand names on each product being rather different (the Aldi product was branded as ‘Taurus’). Thatchers won because of similarities in the appearance of Aldi’s packaging to their packaging trade mark.

More recently, Morley’s, a fast-food takeaway chain, have been successful in a trade mark infringement claim against a competitor called Metro’s. Morley’s trade mark registration (shown as A below) depicts the sign used on the front of their takeaway restaurants. The Morley’s mark was found to be infringed by the use of sign B below.

A

B

If Morley’s had only registered its trade mark as the plain word MORLEY’S, there would have been no realistic prospect of acting against Metro’s for trade mark infringement. However, because Metro’s copied the stylisation of the Morley’s trade mark as registered (note especially the similar typefaces and the capital M in each mark), and also used a slogan with some conceptual similarity (and both of which contained three dots), overall there was held to be a likelihood of confusion between the registered trade mark and the mark used by Metro’s on their signs and menus. The finding of similarity was primarily based on the visual closeness of the Metro’s sign to the Morley’s registered trade mark.

Takeaways

The key ‘takeaway’ here (pardon the pun): registering the appearance of your packaging or signage as a trade mark can provide strong protection against competitors who may deliberately ape your branding, and who might get away with such practices if you have only registered your trade mark as a plain word.

If you need advice on registering your signage or packaging as a trade mark, please contact one of our trade marks team, who will be happy to help.