Many intellectual property legal disputes involve disproportionate protagonists, a David and Goliath battle where a large conglomerate swoops on a far smaller business complaining that there could be confusion between the brands due to a perceived similarity.
Nick McEwen, an associate in Giambrone's corporate and commercial team points out "organisations are right to guard their intellectual property against breaches that could potentially impact on the brand, particularly if there could be an adverse association." Sir Richard Branson was quite rightly disconcerted when a Mr. Truman of Australia, registered the domain name www.richardbranson.xxx. This domain is associated with the adult industry and an alarmed Sir Richard took extremely fast steps to establish that a) he was not about to launch Virgin Porn and b) that he holds the common law trademark rights in his name. In light of this, a National Arbitration Forum decision transferred the domain name to Sir Richard.
However, there are situations where a suggestion of confusion of brands borders on the ridiculous. For example, Harrod's, the well-known Knightsbridge store, sabre rattling against a small regional corner shop in the depths of the country, owned by Mr. Harrold for many years, contending that the fact that as Mr. Harrold had used the same font as the Knightsbridge store on his shop sign that it could create a confusion of brands; the suggestion did not seem to have much merit. Similarly, the Porsche –v- Crocs battle that hinged on the inclusion of the word "Cayman". The shoe manufacturer Crocs had applied the word Cayman to a new product which Porsche had used in its Porsche 718 Cayman range. Porsche suggested brand confusion; this implication led to questions as to whether Porsche believed the general public could not tell the difference between a car and a pair of plastic sandals.
Giambrone's corporate and commercial team assisted a client in a similarly disproportionate brand battle. EasyGroup served a claim, from England, to our client's registered office - a town in Italy. The claim was for trademark infringement for the use of the word "Easy" before a mode of transport – in this case EasyBus. The client predominantly dealt with bus travel in Italy and in the previous six years had used the term on its buses just twice. Nick McEwen commented "upon extensive research, EasyGroup had a habit of taking the "small guy" to court, no doubt relying on the weight of its profile and its deep pockets to daunt the smaller business. A strategy that did not always work as, In fact, the case law did show that the courts were frequently sympathetic to the "small guy"."
Giambrone's corporate and commercial team felt that following a legal analysis that there were certainly grounds to challenge the claim – one of the main defences was that the sign looked dissimilar enough to not be associated with the orange "Easy" brand that Easy Group had created. However, given that the client was a very small business and did not have the financial substance that EasyGroup had our lawyers decided the best option for our client was settlement through negotiation, which proved to be harder than anticipated.
Our commercial lawyers carefully picked apart the remedies that EasyGroup were seeking from their particulars of claim and invited EasyGroup to present a figure for their perceived damages. After nine months of unsuccessful attempts by Giambrone's lawyers to get the EasyGroup's lawyers to the table, EasyGroup's solicitors filed a summary judgment application which was robustly rebuffed by the Giambrone corporate and commercial team on the basis of the costs implications of proceedings they face given that our client was offering everything they wanted. EasyGroup immediately accepted (without any attempt to counter).
Ultimately, this case had quickly shifted from a legal dispute to a negotiation exercise. We at Giambrone & Partners are very adept at adapting quickly, in light of a client's financial position, as it then dictates how we approach a case. What won our case was the constant bombardment and reminder of our client's willingness to settle which served as a strong reminder that there would be costs implications against EasyGroup even if they won their summary judgment application. Our client paid modest legal costs and damages.
Upon our advice our client went on to dissolve the company in Italy and set up a completely new company, he had no objection to re-branding his business and is back on its feet and is waiting for lockdown restrictions to ease so it can begin anew. Giambrone's commercial lawyers take the view that "David" won the day.
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Originally published June 2, 2020.
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