Trademark infringement claims have soared in the last few years. Marks and Spencer filed an intellectual property claim against Aldi concerning caterpillar birthday cakes but ultimately reached a settlement last year. Recently, Lidl succeeded with a high court case against Tesco over its blue and yellow logo.
The latest intellectual property dispute involved the name of Percy Pig, the famous pig-shaped gummy sweets from Marks and Spencer which, following its popularity, has evolved to other M&S ranges and products.
The Dispute
Last month, Fabios Gelato, based in Hertfordshire, began making their Percy Pig ice cream version in their Letchworth branch. The ice cream cafe is well-known for its use of various branded items for flavours, which include chocolate bars, some energy drinks and even Marmite.
When the retailing giant became aware of it, they sent the owner, Mr Vincenti, a polite letter saying that while he could use the sweets within the ice cream, he could not use the name of the product as this was one of their ‘hero’ brands and could only be used on ‘official M&S products’. They asked him to change the name of the ice cream within fourteen days of receiving the letter to resolve the matter.
The Positive Outcome of the Polite Legal Action Letter
Mr Vincenti posted the letter on social media and deemed M&S’s request to change the name to be ‘polite and fair’. The retailer had even sent him some packs of the pig-faced sweets as a goodwill gesture. The courteous letter had the desired effect and Mr Vincenti duly renamed the ice cream flavour ‘Fabio’s Pig’ - although we have heard that it later became the more cheeky ‘Notorious P.I.G’!
It is understandable why Marks and Spencer acted swiftly to enforce their rights in its Percy Pig registered trade mark; it is a valuable brand and by acting quickly, they were able to avoid any potential brand dilution. However, they also handled the matter in a sensible and good-humoured manner, no doubt mindful of the possibility of adverse publicity especially since the company has been in the media spotlight over the last few years in relation to other trade mark disputes.
Lessons to Learn
So what can we learn from Mark and Spencer’s reasonable approach to trade mark infringement? Well, it helps to adopt the right tone. Although M&S adopted a firm approach to protecting its trade mark, its letter was also amicable and explained its concerns clearly in simple language. As a result, it was balanced and constructive. Furthermore, including treats as a goodwill gesture was also ingenious, reflecting well on M&S and creating a feel-good social media story.
The letter got the job done without the need for legal proceedings and was the only cost to M&S (along with a few packets of sweets) in protecting its brand. They managed to steer clear of allegations of corporate intimidation, unpleasant letters and demands, and an expensive lawsuit. Plus there was the bonus of good publicity. Fabio’s Gelato also did well out of the media exposure, especially since Lidl couldn’t resist stepping in to take a dig at M&S by sending the ice cream parlour some of their branded Henry Hippo sweets and letting them know that they would be ‘simply honoured’ if Fabio were to name the new flavour Henry Hippo ice cream! So it was a win-win for all parties involved.
While this dispute involved trade mark infringement, a similarly conciliatory tone could be used in most types of legal disagreements. Clearly, this approach will not work every time, but there is some merit in considering a more courteous, non-confrontational approach to resolving legal disputes.
Crucially, communication should be worded correctly given that further action may be required (to that end, you should give us a call to ensure you get the legalities right). It is important to be concise about what you want and what your next steps will be if the issue is not resolved, for example, if it is a debt settlement, you need to include the amount owed, when it was due and what you will do if an agreement is not reached. However, it is equally important to stick to a reasonable and polite tone and avoid using threatening or disparaging language. Creating a negative mood will only reduce your odds of coming to an agreement.
How We Can Help
At Witan Solicitors, we are experienced in dispute resolution and provide our clients with concrete legal solutions. We can draft firm yet courteous communication on your behalf that will increase the likelihood of your legal dispute being resolved without the need to go to court. If you have a legal dispute and you are unsure what to do next, call us today or email us.
Photo by Miguel Á. Padriñán
