8 times the underdog won a IP battle

Lady Justice wears a blindfold, holding her scales to weigh the law impartially, without reference to wealth, power or status. But can a minnow really win an intellectual property case against a better-funded adversary?

The Starbucks “duffin”


What do you get if you cross a doughnut with a muffin? A duffin, apparently. This calorific hybrid became a staple of Bea’s of Bloomsbury, a small chain of tea rooms in central London founded by Bea Vo. In 2014 Starbucks also started selling duffins and took Bea’s by surprise when the supplier trademarked the name. Cue fireworks. Ms Vo whipped up support on social media: “No one should own the name duffin,” she said. “Food inventions should be credited, not trademarked. I put the duffin recipe in my cookbook for a reason: so people could make them.” The furore triggered a climbdown from Starbucks, which admitted it neither invented the duffin nor would seek to block rivals selling duffins.


Intellectual property (IP) needs to be original; putting jam in dough with a portmanteau is not enough. 


Entrepreneur Sir Stelios Haji-Ioannou can be a litigious chap and with good reason. He’s turned easyGroup into a powerful conglomerate, comprising an airline, car hire and around 20 others businesses. All too often look-a-likes appear and he calls his lawyers. He almost always wins, but there are notable reverses. Pizza joint EasyPizza won a case in 2006 against easyGroup. David Hansel, the lawyer acting for the victorious minnow, says: “easyGroup cannot claim a monopoly over trading names beginning with the word ‘easy’. This applies even where they have obtained a registered trademark, but are seeking to stop an earlier trader from using the ‘easy’ name.” Mr Hansel’s firm Hansel Henson now offers a specialist service for clients who are facing action from Sir Stelios, though the lawyer warns: “If you are looking to rip off easyJet or easyGroup branding then please do not contact us.”


An active IP strategy can keep out all but the most peripheral of threats.


Most companies want to comply with the law. But for companies trading over the internet, the scale and volume of material can make it a challenge. Photo agency Alamy receives two million images a day, so struggles to verify the copyright of the images it then sells to clients. Photographer Eddie Mitchell challenged Alamy over unlicensed use of his aerial drone image of a school on fire. The picture was used by a number of newspapers and media outlets. Mr Mitchell took his case to Worthing County Court, settling out of court for £750. The original offer was £400. He also reached settlement with newspapers.


Vetting huge volumes of IP is tricky; out-of-court settlements are a good way to resolve errors. 


Can an IP conflict be down to sheer coincidence? That was the conundrum in the odd case of Turtle Wax v Dodo Juice. The pair are brands of car polish. In 2014, Turtle Wax unveiled a new marketing wheeze in which customers would take a selfie in the bodywork of their shiny car, hashtag “reflectie”. A brand new Ford Mustang for the best pic. Then up popped British brand Dodo Juice, claiming it was running an identical campaign with #reflectie. The duo fought in the press. Dodo Juice claimed they asked Turtle Wax for clarification, only to get a “cease and desist” letter. Turtle Wax’s boss furiously denied being behind the letter, asking: “Why wouldn’t they call Turtle Wax direct and have a civil conversation about the situation?” Slowly it emerged it really was a coincidence and both parties tacitly agreed to ignore each other until their campaigns had run.


Coincidences happen and it helps to ascertain facts before assuming infringement. 


Music fans will know the old line “where there’s a hit there a writ”. The music industry is awash with IP infringement claims, some of which test the philosophical boundaries of legal theory. Even pop mogul Simon Cowell can get on the wrong side of the law, as he did when X Factor girl band Rhythmix was forced to change its name. Brighton children’s charity Rhythmix claimed the band using the same name would cause confusion. The charity hired lawyers, ran a social media campaign and asked for an early capitulation. The campaign gained traction and Mr Cowell relented. While changing a band name is a risky tactic, as TV audiences can be fickle in their support for reality-show stars at the best of times, the move paid off. The band became Little Mix, now boasting four platinum albums, four number-one singles and a Brit award.


Social media can be a powerful persuader.


The explosion of IP disputes around mobile phone technologies looked like holding up the entire smartphone industry at one point. A row between Nokia and Apple threatened to block the sales of iPhones and Apple successfully had the Samsung Galaxy Tab banned by a US court during a case. So it’s surprising to hear of a tiny company winning against a major brand. Five-employee Nuevas Tecnologias y Energias Catala SL of Spain won a trademark infringement dispute against Apple over the design of its NTK android tablet. Apple initially made the Spanish authorities hold a shipment of 70 devices in customs for year. Nuevas struck back with a counter-suit. The small Spanish company emerged victorious in November 2011, offering a healthy reminder that size and wealth are no guarantee of victory.


It is possible to win against Apple and the iPad.


Log on to Nissan.com and you’ll see the full case laid bare. An Israeli born entrepreneur by the name of Uzi Nissan came to the United States in 1976 and used his surname for a variety of businesses. In 1987 he founded and import-export business called Nissan International and in 1991 founded Nissan Computer Corp. In 1996 he registered Nissan.com and used the domain to offer internet connection services. In 1999 the motor company Nissan began legal action against the entrepreneur, asking for the domain and $10 million in damages. Again and again the matter went to judgment. Each time Uzi Nissan won. Key to his argument is the fact that Nissan initially traded as Datsun in the US. He claims he intended no violation of a trademark which at the time was not in significant usage in the States. Today Nissan.com remains in the possession of Mr Nissan. The car company is forced to use NissanUSA.com and national variants.


Prior use is a strong defence. 


W.O. Bentley founded his car company in 1919 and won Le Mans five times in the next decade. The brand is now a subsidiary of Volkswagen and retains its founder’s vision of matching aristocratic excess with engineering prowess. Bentley Clothing is an unconnected brand. Earlier this year, the car brand challenged the clothing brand, with Bentley Motors claiming it had used the Bentley mark for clothing since 1920 and had a “very high level” of goodwill. The hearing found for the clothing brand. The presiding official stated: “I do not accept that Bentley Motors have met the burden upon them to show that they have used their mark… during the relevant period.” Christopher Lees, director of Bentley Clothing, said: “This battle has been so extreme, involving the CEOs of both Volkswagen and Bentley Motors, that a film producer has asked to make a film about it.”


Use it or lose it.