If you’re a small business who feels intimidated by a demand letter from a bigger brand owner with deeper pockets, then the most obvious recourse does not lie in the law. In today’s New Media Age, you may decide to post the letter on social media and see if you can create enough of a PR disaster for your opponent to coerce a retraction. This is exactly the line of attack taken by Dave Shand of Hilltrek Outdoor Clothing in Aberdeenshire against his Goliath, the National Trust for Scotland (NTS).
The NTS wrote to the business owner putting him on notice of its trade mark registration for the mark GLENCOE in various classes including class 25 (clothing etc.). The NTS demanded that he immediately cease selling goods which bear the name GLENCOE, including his ‘Glencoe DV Jacket’ sold via his website. Mr. Shand posted the letter on social media and accused the NTS of bullying, alleging that he has sold the jacket for over 30 years and will not stop. The online response has been very much in Mr. Shand’s favour: he has secured crowdfunding for legal advice on the merits of the claim and there has been much mocking of the contents of the NTS letter on online forums.
The NTS has conceded that its letter was too harsh in tone, perhaps seeking to minimise the PR disaster, but what is the lie of the land on geographical names as brands? The leading case on this practice is Windsurfing Chiemsee v Boots and Attenberger (C-108/97 and 109/97). This case tells us that geographical indications may be registrable as trade marks, however, registration should be refused where:
- The name designates a place, which in the minds of the relevant public, is already associated with the goods or services listed in the application, or
- There is no current association but the name is liable to be used in the future as an indication of the geographical origin of the goods or services concerned. In this case, consideration should be given to the degree of familiarity amongst the relevant classes of person with the geographical name in question, the characteristics of the place and the nature of the goods/services concerned. In particular, it is not necessary for goods to be manufactured in a place before the name is liable to be excluded from registration as a trade mark for those goods.
The author considers that GLENCOE is known in the UK as an area for outdoor pursuits and hiking and we know from case law that it is not necessary for hiking clothing to be manufactured in Glencoe for the name to be associated with the geographical indication. Accordingly, regardless of the debate over whether Mr. Shand’s prior use enables him to invalidate the NTS registration or reach a coexistence agreement, it is arguable whether GLENCOE can function as an indication of trade origin.
There is no new law in this case, just a reminder to brand owners that your letters may go viral and the PR backlash may be difficult to weather.