Handbags at dawn between Radley and Poundworld?
The Times recently reported that handbag / leathergoods maker Radley had commenced High Court proceedings against discount retailer Poundworld over one of the latter's products.
Radley's bags feature a small leather tag in the shape of a small dog (a West Highland terrier or similar). It appears that the Poundworld product to which they have taken objection is a bag which is decorated with around a dozen dog images.
Radley are concerned that the Poundworld bags will lead to harm being done to the image of their products, while a Poundworld spokesperson has indicated that questions over details of design are common in the retail world, and that they are working to achieve an amicable resolution to the matter.
Radley appear to have a number of Registered Trade Marks for their "Scottie Dog" (some including the name Radley, some not) though the precise legal basis for their claim against Poundworld has not been made clear by the reports which have so far emerged.
Proving any sort of "confusion" when discount retailers are involved can be difficult since Judges find it difficult to believe (not unreasonably, perhaps) that - in this case - a customer would genuinely think that they were buying the luxury brand's product (or even one endorsed by them) for £1.
However, if Radley have been able to rely in their pleadings on s.10(3) of the Trade Marks Act which protects marks which enjoy a particularly high level of established reputation (which a Claimant has to plead and support with evidence), then they may find their task somewhat easier, since this sort of claim does not require proof of confusion, merely evidence that the Defendant is "taking unfair advantage" or "acting to the detriment" of the reputation of the established mark without good reason.
This was certainly an argument that we ran on behalf of our client The Saucy Fish Company in 2014 in a well-reported dispute with Aldi Stores Limited https://www.thegrocer.co.uk/buying-and-supplying/aldi-and-icelandic-settle-saucy-fish-copycat-case-out-of-court/373568.articleand can be a powerful tool, demonstrating the value of investing money in the development of a brand and its reputation.
We'll be keeping an eye on how the Radley and Poundworld issue develops, and in particular whether it sheds any more light on the protection that intellectual property rights can afford brands with a premium product against "me too" competition from discount retailers.
Posted on: 01/06/2017
This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.
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