British luxury fashion house Burberry has recently launched a legal action in the UK High Court against discount retail chain B&M for trade mark infringement and passing off. Burberry alleges that B&M is falsely representing goods sold under its “furberry” pet brand.
B&M began selling its “furberry” line of branded pet accessories earlier this year. The furberry range includes pet bowls, toys, blankets, mats and beds, all of which are finished with a red, white and black checkered pattern on a beige background. Many readers will be familiar with the Burberry check, which often appears in these colours (as well as other colourways).
Burberry, founded in 1856 by Thomas Burberry, is renowned for its signature “Burberry check” pattern, which has been used across Burberry’s fashion items since the early 1900’s. Most notably, the check has been applied as a blanket print across Burberry scarves, and is famously lines the inside and collar of the iconic Burberry Trench coat. Burberry owns a trade mark for its check mark in the red, camel, black and white colourway. However, it is currently unclear which registered trade marks Burberry is seeking to assert against B&M in this dispute.
It is worth noting that pattern marks can be difficult to register as a trade mark. In the EU, brands are required to prove that their pattern mark is distinctive enough to meet the criteria for registration, which brands have often found difficult to prove, perhaps unsurprisingly. That said, it will be interesting to see how this case unfolds, particularly against a discount retailer. Discount retailers, including notably Aldi and Lidl, have been the subject of many trade mark disputes. Indeed, their product and marketing strategies centre around imitating other brands. Recent examples include Aldi’s gin that appeared to infringe M&S’ design rights, a cider product that was claimed to cause confusion with Thatchers’ and, of course, the very public spat with M&S over Aldi’s version of the Cuthbert cake.
Might this case be an indication of B&M following Aldi and Lidl’s strategies?
COMMENT
Trade marks are crucial for creative and FMCG businesses, where a strong brand identity is central to success in what is often a crowded market. This is even more so for luxury brands, such as Burberry, where cachet is at the heart of their brand. Luxury businesses must have a strong brand protection strategy and take steps to enforce their rights against inferior brands, such as B&M, who provide goods at much lower cost, and usually lower quality, risking significant damage to Burberry’s reputation.
Brand dilution is another threat for brand owners. Unauthorised use of a trade mark can weaken a brand’s distinctiveness, making it harder to attract and retain customers, as well as having a significant impact on revenues. In addition, a weakened brand could result in brands struggling to licensing deals or attract investors.
Neither Burberry nor B&M have commented on the dispute, but it will be interesting to see how this case plays out. We will monitor this case and provide an update in due course.
Contact our FMCG team to carry on the conversation.
