Lawyers in the Red(d)

In December 2012, judgment was handed down in an interesting trade mark dispute between a firm of London-based intellectual property lawyers, Redd Solicitors, and a Northampton-based firm of Licensed Conveyancers, Red Legal Limited.

Redd own a Community Trade Mark (CTM) for the word "Redd" and had also acquired (as part of the settlement of an earlier dispute) the UK registered mark "Red" in respect of legal services.  They claimed that Red Legal had infringed both of their registered trade marks.

Red Legal defended the claim, and counterclaimed for partial revocation of the CTM, asserting that because Redd were a specialist firm who dealt only in Intellectual Property matters, their trade mark protection should be confined to a narrower range of services than "legal services" generally, and certainly should exclude conveyancing work.

However, the Judge (HHJ Birss QC) felt that the range of services offered by Redd under their registered marks was quite broad, sufficient to justify the wider description of "legal services."  In his judgment, he said "it would not strike a fair balance between the respective interests of the proprietor, other traders and the public to make such a carve-out from the specification in this case" and he added that he thought that "the only fair specification for the claimant's trade mark is 'legal services', without qualification."

Red Legal's claim that Redd's CTM should be partially revoked therefore failed on this point.

Red Legal offered a number of defences to infringement of both the CTM and the UK registered mark.

Firstly, they sought to argue the "own name" defence - that they were using the name "Red Legal" in accordance with honest practices and it was the name of their company (Red Legal Limited).  The Judge rejected this defence both in relation to the CTM and the UK mark.  He felt that as they used the name prominently as a brand, and not simply to identify their company name, and since it was a "made-up name" there was no reason why they should be allowed to use it, and if they had simply carried out a trade mark search properly at the outset, they would have been alerted to Redd's marks and been advised to act differently.

Secondly, they sought to argue that they had the benefit of localised goodwill and therefore had the benefit of the "locality" defence under s.11(3) of the Trade Marks Act, which prevents a subsequent registered mark holder from objecting to use by someone who has already established goodwill in a particular locality in the same or a similar mark.

This defence, however, does not apply to infringement of a CTM and so although the Judge was prepared to agree that they had the benefit of the Defence within an area focussed on Northampton in relation to the UK mark, he found that they were still infringing Redd's CTM.

This case is notable for the "common sense" approach taken by the Judge in construing the range of services offered by the trade mark holder, Redd, when compared to the scope of their registration.  He effectively tried to gauge the public perception of what the mark was registered for, and what the proprietor, Redd, actually did in their business.

It is also worth noting the absence of the locality defence against an allegation of infringement of a Community Trade Mark, which underlines the value and strength of that form of registration, and the importance and value of carrying out proper and full trade mark searches before settling on a name for your business.  In Red Legal's case, the Judge made a point that they could not have put themselves into any worse position had they actually carried out such a search.

Posted on: 11/03/2013

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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