Sunday, 25 March 2012

D and G: David and Goliath?

I just posted this on the Motor Law blog and thought it merited exposure here too ...

Motor Law's friends at Auto Retail Network report how two partners in a Fife-based garage business received a notice of threatened opposition from Dolce & Gabbana when they tried to register their trading name, D + G Autocare. The Italian fashion house claimed that the business, which has nine branches in Scotland, could be confused with it if the trade mark application were allowed to proceed. Are they serious?

The garage business is run by George Simpson and David Hunter, hence the name. Mr Simpson told the Daily Record (which has the story here): ‘it was outrageous. How on earth could a garage that knocks out £35 MoT tests be confused with a company known for its £735 handbags?’ (I see that Mr Simpson spotted the "David and Goliath" analogy - I can only say that I thought up the title of this post before I read the Daily Record website.) Their lawyers replied with what Auto Retail Network called "a stiff rebuttal", leading to a sensible compromise: so long as the garage kept ‘Autocare’ as part of its trading name, the fashion house would withdraw its objections. I can't find the trade mark application online, but I bet that it corresponded to the company name and therefore the "Autocare" part was there anyway, which makes Dolce & Gabbana's threats even less justifiable.

There is protection in the Trade Marks Act 1994 for businesses that just use their own name, even if that name is invented. However, they can only do so if it is in accordance with honest practices in industrial and commercial matters - which would exclude trying to take a free ride on the reputation of an earlier business. Hard to see how the Italians' reputation could help with car servicing in Fife ... Perhaps they just want to monopolise the style "D&G", like so many big brand owners. The Act also protects companies with a local reputation, who can't be forced out of business by trade mark bullies, but they don't have a right to register their trade mark. Fortunately, common sense seems to have prevailed here, but it's such a shame that they should have been put to the trouble and expense. The trade mark system consistently fails the small business community.

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