The power of a registered trademark –

The Dutch chocolate brand, Tony’s Chocolonely is known for its ethical attitude and commitment to combating child labour in the cocoa industry by making their chocolates 100% exploitation free.

In a new marketing campaign that was unveiled in Germany and Austria, Tony’s launched four new temporary parody chocolate wrappers with an aim to enhance the visibility of exploitation within the cocoa industry.

One of the new parody wrappers had a resemblance to the iconic bar for its particular lilac colour produced by major industry company, Milka.

The campaign has caused controversy in the chocolate industry as Milka’s parent company Mondelez has accused Tony’s of trademark infringement and filed an injunction over the copycat campaign.

Tony’s appealed the injunction but still agreed to comply in the meantime by changing the parody packaging from lilac to grey.

This is not the first time Tony’s campaigns have made headlines. Back in 2021, the company deliberately left one of its advent calendar windows empty and received a lot of complaints as a result.

It will be interesting to see how the case unfolds with the Dutch brand Tony’s being subject to legal proceedings as a result of its parody campaign. This case certainly does provide a useful reminder to companies when it comes to protecting one’s mark. The trademark registration will offer the maximum legal protection against other competitor companies.

If you would like to discuss what this case may mean for your business, or you would like to explore the possibility of registering your own trademark then please do not hesitate to contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

L V Bespoke, a family-run business based in Norfolk, recently won a trademark dispute against the fashion giant, Louis Vuitton, after a two-year legal battle.

Back in 2020 when lockdown hit the country, Mr and Mrs Osborne founded L V Bespoke. They had a  view to create steel plant supports and other home and garden products.

They decided to register L V Bespoke as a trademark as their business looked like it was taking off. Unfortunately, they received a letter from the Louis Vuitton legal team.

The fashion label argued that by registering the trademark “L V Bespoke”, there would be confusion in the eyes of consumers. Such confusion could also work for the benefit of the couple. According to them, the use of L V Bespoke would “take unfair advantage of, or would be detrimental to” Louis Vuitton’s earlier trademarks. 

Mr and Mrs Osborne decided to fight the objection. They argued that their metalwork products are clearly different than the metalwork found in Louis Vuitton’s handbags. The couple thought it was “surreal” to compare both metalwork and imagine that there could be any sort of confusion. This is what the judge, Matthew Williams, ruled in favour of.  According to him, “almost all of L V Bespoke’s goods were self-evidently dissimilar” to Louis Vuitton’s products. He added that “the only point of commonality is the presence of the same two single letters “L and V”.

Mr and Mrs Osborne spent almost over £15,000.00 in legal proceedings and lost two years of potential business growth. The judge however ruled in their favour and ordered Louis Vuitton to pay their costs and £4,000 in damages.

Intellectual Property Law can be delicate and a source of great stress when entering into a dispute. Whether in relation to trademark, copyright, patent, or passing off, the rules around Intellectual Property Rights can be difficult to navigate. Our commercial team has a wide range of experience when it comes to Intellectual Property and infringement of IP Rights and would be happy to assist both individuals and businesses with any issues relating to Intellectual Property.

For further advice and assistance please contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

The libel case involving football players’ wives Rebekah Vardy and Coleen Rooney resulted in what the BBC called a “humour” trademark registration.

The dispute between the two personalities began in 2019 when Coleen Rooney accused Rebekah Vardy of leaking posts from her private Instagram account to The Sun. Vardy subsequently sued Rooney for libel in 2020 and the case was heard in May 2022. Unfortunately for her, Vardy’s claim was dismissed by the court on the basis that Rooney’s statements were substantially true. The case was widely relayed by media as the parties are what the British media called “WAGs” (Wives and Girlfriends of high profile sportsmen) and, because of the steps taken by Rooney to investigate, the case became popular and known as the “Wagatha Christie” case.

The BBC reported that following her defeat in July 2022 when the case was dismissed, Vardy decided to trademark the phrase “Wagatha Christie” and applied for it to be registered in the UK in August 2022. The trademark was then officially registered in April 2023 and includes everything from broadcasting to beauty lotions to stationery, jewellery or even fashion design.

In simple words, a trademark encompasses a wide range of different distinguishing signs such as any words, phrase, symbol, design or a combination of all of these that identifies a good or service. Registering a trademark provides the owner with an exclusive right to use the registered trademark and it can be licensed to someone else in exchange of payment. The owner of the trademark will also have legal certainty in the event of dispute.

By registering the “Wagatha Christie” trademark, Vardy managed to pay off her legal costs from the trial as it was reported that the court ordered her to pay 90% of Rooney’s legal fees of circa £1.5million. This is because anyone who wishes to use the expression in a commercial way will have to get Vardy’s permission and pay her and this dispute was not only reported in the news, it was also adapted into a play and a TV show called “Vardy v Rooney: a courtroom drama” on channel 4.

This is a great example of how registering a trademark could be useful in protecting its owner’s rights but also turn out to be quite lucrative.

For further advice and assistance please contact our Buisness Services team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk