How to eradicate unwanted Ivy

It is only just over a fortnight since this weblog lost both of its Scottish contributors, and suddenly there's a flurry of IP interest breaking out from the far north of the British Isles. Fortunately, the IPKat's friends Gill Grassie and Robert Buchan (Brodies LLP, Edinburgh) were able to take some time off from their real work to pen the piece which appears below.  Thanks, Gill and Robert -- and don't forget, you may have to account to your partners for any portion of your well-deserved katpat that is deemed to be partnership income.

Getting Tangled in the Ivy

Last year, the owners of “Glasgow’s Ivy Bar and Restaurant” received a letter threatening it with trade mark infringement from the owners of The Ivy, a famous restaurant in London which is owned by Caprice Holdings.  The Glasgow restaurant was forced to change its name even though it had apparently been using it for the previous years. Also, according to The Herald last week, the estimated costs and losses associated with this rebrand were around £30,000.  £20,000 of this was attributed to lost business and £10,000 was incurred in creating a new website, signage and other rebranding for the Glasgow restaurant.  

Caprice's grounds for complaint/action 

As many readers will know, in the UK a registered trade mark is infringed if a person uses without the owner’s consent in the course of trade: 

(i)                 an identical mark for identical goods/services and/or

(ii)                a similar or identical sign is used for similar or identical goods/services which results in actual or likely confusion amongst customers as to the origin of the goods/services and/or

(iii)             where use of a sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of a famous trade mark. 

Subject to any defence argument based on acquiescence, Caprice had  a pretty clear-cut case of infringement against the owners of the Glasgow restaurant under one or other or even under all three heads.  Under head (i) for example UK case law is clear that descriptive or semi descriptive elements such as the words “Glasgow”, “Bar” and “Restaurant” are not considered to be part of the sign being used.  Even if the  marks were not found to be identical, a good  case could easily be made out under heads (ii) and (iii).  

The Scottish /UK dimension on passing off 

 What about a claim for passing off to protect the unregistered rights and goodwill built up in THE IVY over many years? Passing off may have been trickier to establish, given it that it depends on establishing inter alia localised reputation and goodwill as well as likelihood of or actual confusion. The Scottish/UK dimension when it comes to passing off cases is often forgotten about, in that both goodwill and reputation need to be established locally. That might have had its challenges here -- despite the internet -- given the geographical distance between London and Glasgow. 

With regard to marks used in relation to goods, if those goods are marketed and sold to customers in Scotland under the mark that is sufficient for both reputation and goodwill. However, if they are  known by customers in Scotland but are not in circulation there, that works for reputation  but not for goodwill and so there can be no case of passing off. In this case though services are the issue and they are more difficult. The services were provided in London . If the London Ivy was heard of in Glasgow, that would work for the purposes of reputation but not goodwill which would need actual business to be done there. Perhaps evidence of actual reservations made by Glasgow-based punters would suffice. In the Cipriani case [on which see earlier Katposts here and here] this issue of local goodwill came up but there was no need to decide the point. 

One of the beauties of having a registered trade mark is that it takes effect UK-wide and there is no need to prove local goodwill or reputation. 

Perhaps the outcome in this case was not altogether surprising and no doubt, in choosing their new name, the owners of the Glasgow premises would have done their homework and carried out appropriate clearance searches beforehand. Maybe too, once bitten, they will have applied to register their new name as a trade mark…".

The IPKat draws the attention of readers to Cat the Kat's post on the Fat Duck dispute, which raises similar issues.  Merpel want to know why any restaurateur should want to name a restaurant after a plant that is generally inedible and sometimes poisonous.

How to get rid of unwanted Ivy here
Poison Ivy here (nb a cover version of this song was recorded by the Paramounts, the beta version of what later became Procol Harum)
Ivy League here