Two London-based cab drivers, Daniel O’Connell and Pete Adams, who run a community-centred fashion business in Brixton, South London, Brixton Street Wear, are facing a potential claim against them from Brixton LLC, a US apparel company based in California. Brixton LLC has reportedly sent a cease-and-desist letter, demanding that the UK business desists from using the name “Brixton” (which it has protected by trade mark registration in the UK) as part of its brand name on clothing.

This case raises key issues on the enforcement of trade mark law. Grace Makungu and Laurie Heizler analyse the legal implications for both parties and provide guidance on what actions to take if you receive a cease-and-desist letter.

Geographical names in trade mark and passing off disputes

The primary issue here revolves around whether Brixton LLC can enforce its trade mark rights over Brixton Street Wear. Brixton LLC owns three UK trade mark registrations, which specifically protect the “Brixton” brand as used for clothing and apparel. For whatever reason “Brixton” was chosen, it cannot be argued that the trade marks are invalid simply because they reference a widely recognised geographical location in South London.

The Trade Marks Act 1994 allows traders to register distinctive signs used in the course of trade which can include geographical names if the places in question have no association with the goods or services. If it were the case that Brixton was a place which is strongly associated with the making or selling of clothing, the word “Brixton” would have no distinctive value and such a trade mark could be invalidated if Brixton LLC tried to enforce it.

Pete Adams has reportedly asked the question, “How can you own a geographical place?” This is not quite the issue. Brixton LLC is however simply trying to enforce its UK trade mark rights in a distinctive word which just so happens to be a geographical place name with no general association with clothing. The argument is whether there is a likelihood of confusion or association between the two businesses on account of the brand name similarity as they are both selling clothing.

In addition to registered trade mark infringement, Brixton LLC may also invoke “passing-off” a common law wrongdoing that protects against misrepresentation (the similarity of Brixton Street Wear’s brand to any of the Brixton LLC trade marks). To succeed in a passing-off claim, Brixton LLC would need to show that its brand has built goodwill in the UK, and that Brixton Street Wear’s use of the name misleads consumers into thinking that the two brands are connected, and such misrepresentation leads to the dilution of goodwill and financial loss.

Community impact

An important aspect of this dispute, which may influence public perception, is Brixton Street Wear’s community focus and limited financial resources. Unlike Brixton LLC, the London-based business is portrayed as a community hub which reinvests its profits into local charities and initiatives. The threat of pursuing a claim against Brixton Street Wear could be viewed as a “David and Goliath” situation in which a large US corporation is attempting to shut down a socially responsible small British business.

Brixton LLC may wish to portray itself as a sensitive and socially responsible company. If so, it may be willing to be conciliatory and perhaps propose a co-existence arrangement with Brixton Street Wear, but this must be pure speculation.

The Brixton case highlights the sensitivities that can arise especially when small, community-oriented businesses are pitted against larger corporations. While the trade marks appear to be valid, the defences available under the legislation will require careful analysis. Given the broader social and community context surrounding Brixton Street Wear, public opinion may prove influential if Brixton LLC does not want to lose goodwill of its own.

What should you do if you receive a cease-and-desist letter?

Businesses facing trade mark disputes with limited financial resources have several options:

• Firstly, it is essential to search both the public register of trade marks and the trading names used by your competitors before choosing your own brand name. Investing in searches and professional advice at the outset are worth the investment, and could save a considerable amount of money if they enable you to avoid a dispute in the future
• IP insurance can provide future protection and cover legal costs for trade mark or passing-off disputes
• Rallying public support through social media and crowdfunding to help raise funds to pay for legal fees. This option could potentially be significant, as public sentiment often plays an important role in high-profile disputes
• Getting the story into the media can play a role where the trade mark owner receives negative publicity which becomes a reputation management issue
• In a few cases, it may be possible to negotiate a co-existence agreement whereby the defending party uses the conflicting trade mark under licence, thus avoiding the cost of rebranding.

Why professional legal advice is essential

It is important to note the risks of handling trade mark disputes without professional legal advice. DIY approaches can lead to the underestimation of the considerable technicalities of trade mark law.

At TWM, we regularly see prospective clients who do not realise that sometimes they are in a strong position. Without professional legal advice, they often cannot maximise the advantages they have. Being forced to rebrand can be hugely costly to a business, even if a surrender can be negotiated without payment of damages or account of profits and legal costs.

Seeking specialist legal advice is, therefore, important at an early stage to protect the investment of hard cash and other resources in your brand.

We would be happy to discuss trade marks and other intellectual property disputes informally with you at the outset, whether you are trying to enforce your own trade marks or if you are defending your position against a trade mark owner.